Piracy of designs, remedies, and the distinction between design, trade mark, copyright and patent

1. What amounts to piracy: section 22(1)

During the existence of copyright in a design, it is unlawful for any person:

• (a) for the purpose of sale, to apply or cause to be applied to any article in any class in which the design is registered, the design or any fraudulent or obvious imitation of it, except with the licence or written consent of the registered proprietor, or to do anything to enable the design to be so applied;
• (b) to import for sale, without consent, any article of the registered class bearing the design or a fraudulent or obvious imitation; or
• (c) knowing that the design or an imitation has been applied without consent, to publish or expose that article for sale.

Three conditions follow from the text: the design must be registered and in force; the defendant’s article must be in the same class; and the use must be commercial (for sale). Under clause (c), knowledge is required; under (a) and (b) it is not.

2. Tests: obvious or fraudulent imitation

• Obvious imitation: a design so like the registered one that the resemblance strikes the eye at once; the differences are trivial.
• Fraudulent imitation: a design that is less close, but which was deliberately copied with small changes to escape the registered design.
• The comparison is made by the eye, as a whole, through the eyes of an ordinary customer of the article, not by placing the two side by side and listing differences. Small differences do not prevent infringement if the overall visual impression is the same.
• Only the features that make the registered design new count. If the similarity lies in features that are common to the trade or dictated by function, there is no piracy.

3. Defences

• Every ground of cancellation under section 19 is available as a defence (section 22(3)): prior registration, prior publication anywhere, lack of novelty or originality, non-registrability, or that it is not a “design” at all, for example because the feature is functional.
• The article is in a different class, or the copyright has expired or lapsed (and no suit lies for acts between lapse and restoration, section 14(2)).
• Consent or licence of the proprietor.
• Want of marking: if the articles were not marked as registered, no damages unless the defendant knew or had notice of the registration (section 15(1)(b)).

4. Remedies: section 22(2) to (5)

• For every contravention, the defendant is liable to pay the proprietor a sum not exceeding twenty-five thousand rupees, recoverable as a contract debt, but not more than fifty thousand rupees in total for any one design; or
• if the proprietor elects to sue for damages and an injunction, such damages as are awarded, and an injunction against repetition.
• Forum: no suit in any court below the court of the District Judge. If the defendant pleads a ground of cancellation, the suit is transferred to the High Court (section 22(4)). Suits of specified value are commercial suits before Commercial Courts.
• A copy of the decree is sent to the Controller for entry in the register (section 22(5)).
• Relief against groundless threats and certificates of validity are available as for patents (section 23).

5. Design and copyright: section 15 of the Copyright Act

• Section 15(1): copyright under the Copyright Act does not subsist in a design registered under the Designs Act.
• Section 15(2): copyright in a design capable of registration but not registered ceases as soon as an article to which it is applied has been reproduced more than fifty times by an industrial process by the owner or his licensee.

The original artistic work (say, a drawing) keeps its copyright; what is lost is protection for the design as applied industrially. In Cryogas Equipment Pvt. Ltd. v. Inox India Ltd., 2025 INSC 483 (decided 15 April 2025), the Supreme Court set out the parameters for deciding whether a work falls within section 15(2) and is therefore a “design” under section 2(d) of the Designs Act. In outline: first ask whether the work is a purely original artistic work, which keeps its copyright, or a design derived from it and applied to an article by an industrial process; if it is the latter and has been reproduced more than fifty times, Copyright Act protection is lost and only the Designs Act can help. The case arose on an application to reject a plaint under Order VII Rule 11 CPC.

6. Design and passing off

A registered design and a trade mark serve different purposes, but the same shape may come to identify a trader. A Full Bench of the Delhi High Court in Mohan Lal v. Sona Paint & Hardwares (2013) held that a registered design cannot as such be a trade mark, but that a passing off action lies where the proprietor uses the design, or features of it, as a trade mark that has acquired goodwill. A larger Bench in Carlsberg Breweries v. Som Distilleries (Delhi High Court, 2018) held that a single suit may join a claim for piracy of a registered design with a claim for passing off.

7. Distinctions

• Design and patent. A patent protects an invention: a new product or process with an inventive step and industrial application; it is concerned with how a thing works. A design protects only appearance judged by the eye and excludes any mode or principle of construction and mechanical devices. A patent lasts twenty years; a design at most fifteen. A patent is examined for inventive step; a design only for novelty and originality. The same article may have both: a new mechanism patented and its outer shape registered as a design.
• Design and trade mark. A trade mark identifies the source of goods or services and must be distinctive; a design adds eye appeal to the article itself. A trade mark can last indefinitely by renewal every ten years; a design cannot exceed fifteen years. Trade marks are excluded from the definition of design, though a shape may be protected as a trade mark under the Trade Marks Act if it is distinctive (see the IPR I notes on trade marks).
• Design and copyright. Copyright arises without registration and protects artistic works whether or not they have artistic quality, for the life of the author plus sixty years; a design right arises only on registration and protects industrial application to articles. Artistic works are excluded from the definition of design, and section 15 of the Copyright Act prevents double protection.
• Remedies. Infringement of copyright and trade marks is also a crime; piracy of a design is only a civil wrong.

8. Problem

X registers a design for the shape of a plastic chair in the furniture class. Y makes and sells chairs of almost the same shape, but with a different colour and a small change to the armrest. Y says the shape is functional and that a similar chair was shown in a foreign catalogue before X’s application. Advise X.

Issue. Whether Y has committed piracy under section 22 and whether Y’s defences succeed.

Law. Sections 2(d), 4, 19 and 22 of the Designs Act, 2000.

Application. Y applies to articles in the registered class, for sale, a shape that strikes the eye as the same; a change of colour and a small change to an armrest do not alter the overall impression, so it is at least an obvious imitation. On function: section 2(d) excludes only features dictated solely by function or a mere mechanical device; a chair can take many shapes, so its particular shape appeals to the eye and is a design. On prior publication: under section 4(b) disclosure anywhere in the world before the filing date destroys novelty, so if the catalogue showed the same shape applied to a chair before X’s application, the registration is liable to cancellation under section 19(1)(b), and that is a defence under section 22(3).

Conclusion. X should sue in the court of the District Judge for an injunction and damages, or claim the fixed sum. Because Y pleads invalidity, the suit will be transferred to the High Court. X succeeds unless Y proves that the catalogue was published before X’s filing date and disclosed substantially the same design.

How this is examined

“Infringement of design” was set as a 6-mark note in January 2026 and February 2025, and June 2025 asked “What is infringement of design? Explain the remedies against infringement” for 10 marks. Use sections 1 to 4 above. The syllabus item “distinction between design, trade mark, copyright and patent” is answered from section 7, and section 5 is the place to show knowledge of Cryogas.