Rights of the Registered Proprietor, Piracy and Remedies

1. The proprietor’s rights

On registration the proprietor has “copyright in the design” for ten years, extendable by five (section 11). Section 2(c) defines this copyright as the exclusive right to apply the design to any article in any class in which the design is registered. Associated rights:

• to assign the design or grant licences, which must be in writing and registered with the Controller to bind third parties;
• to sue for piracy, and to have the decree entered in the register (section 22(5)).

The right is a monopoly, not merely protection against copying: independent creation of the same design is still piracy, which distinguishes design right from copyright.

2. Piracy (section 22(1))

During the existence of copyright in a registered design it is unlawful for any person, without the licence or written consent of the registered proprietor:

1. 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, for the purpose of sale;
2. to import for sale any such article where the design or an imitation has been applied without consent; or
3. knowing that the design or an imitation has been applied without consent, to publish or expose for sale any such article.

“Obvious imitation” is one that is apparent at once to the eye as a copy. “Fraudulent imitation” is one that is less apparent but was made with knowledge of the registered design and an intention to copy it with small differences. The comparison is made through the eye of the ordinary purchaser, looking at the designs as a whole and at the features the statement of novelty claims, not by side-by-side microscopic comparison.

Mere differences in size, colour or material do not avoid piracy if the shape is the same. The defendant’s own registration is not a defence: the Bombay High Court held in Whirlpool of India Ltd. v. Videocon Industries Ltd. (2014) that a piracy suit lies even against a registered proprietor of a later design, because the later registration may itself be cancelled.

3. Remedies (section 22(2))

A person who pirates is liable, for every contravention:

1. to pay the registered proprietor a sum not exceeding twenty-five thousand rupees recoverable as a contract debt, with a proviso that the total so recoverable for any one design shall not exceed fifty thousand rupees; or
2. if the proprietor elects to sue for damages and an injunction, to pay such damages as are awarded and to be restrained by injunction.

The suit cannot be instituted in any court below the court of the District Judge. The remedies are alternative: the fixed sum under clause (a), or damages plus injunction under clause (b). Courts also grant interim injunctions under Order XXXIX of the Code of Civil Procedure, delivery up and destruction, and an account of profits. Commercial suits above the specified value go to the Commercial Courts under the Commercial Courts Act, 2015.

4. Defences

• Invalidity. Every ground of cancellation under section 19 is a defence (section 22(3)). If invalidity is pleaded, the suit is transferred to the High Court (section 22(4)).
• No piracy. The defendant’s article is in a different class, or the similarity lies only in functional features or in features excluded by disclaimer.
• Licence or consent of the proprietor.
• Expiry or lapse of the registration.
• Knowledge matters only under clause (c) (publishing or exposing for sale): a seller who did not know the design had been applied without consent is outside that clause, but a maker or importer is not.

5. Passing off of designs

A design that has become associated with a trader in the public mind can also function as a source identifier (think of the shape of a bottle or a shoe). The question was whether the registered proprietor could sue in passing off as well.

• In Mohan Lal v. Sona Paint & Hardwares (Delhi High Court, Full Bench, 2013) the court held that a passing-off action lies in respect of a registered design if the design is used as a trade mark, that is, as an indication of source, and goodwill and misrepresentation are proved. It also held that a single suit combining design piracy and passing off was not maintainable because the causes of action are different.
• In Carlsberg Breweries A/S v. Som Distilleries and Breweries Ltd. (Delhi High Court, a larger bench, 2018) the court overruled the second part: a composite suit for design piracy and passing off is maintainable where the facts are common, to avoid multiplicity of proceedings. Passing off still requires proof of goodwill in the trade dress, not merely registration.
• The Crocs litigation in the Delhi High Court applied these principles to the shape of clogs; a Division Bench in 2024 allowed Crocs’ passing-off claims to proceed after Carlsberg.

The policy concern is that passing off could give a perpetual monopoly over a shape after the fifteen-year design term ends. Courts therefore insist that the shape must actually signify source to the public, and features that are merely attractive do not suffice.

6. Comparative notes

• United Kingdom. In PMS International Group plc v. Magmatic Ltd. (UK Supreme Court, 2016) (the “Trunki” ride-on suitcase), the registered design showed a three-dimensional shape in grey-scale; the defendant’s similar case with different surface decoration did not infringe because the overall impression differed. The lesson is that the representations filed define the scope of protection.
• United States. 35 U.S.C. §289 lets a design-patent owner recover the infringer’s total profit on the article of manufacture. In Samsung Electronics Co. v. Apple Inc. (US Supreme Court, 2016) the Court held that the “article of manufacture” may be a component (such as a phone’s casing or screen) rather than the whole product, which limits the award.
• EU. Registered design holders can stop any design that does not produce a different overall impression on the informed user, and the unregistered design gives three years of protection against copying.

How this is examined

The standard 16-mark question is the one set in 2025. Quote section 22(1) and (2) accurately, explain obvious and fraudulent imitation, list the defences, then give the passing-off position after Mohan Lal and Carlsberg. Close with criticism of the low statutory sums and the absence of criminal and border remedies. A problem may ask whether a competitor who copies a registered bottle shape in a different colour commits piracy: yes, if the shape is the claimed feature.