INTELLECTUAL PROPERTY RIGHTS

Dr. ShakuntalaMisra National Rehabilitation

University, Lucknow

ON :-

UNDER THE SUPERVISION OF

SUBMITED TO: SUBMITED BY:

shail shakya shashi shekhar dixit
Faculty of Law, DSMNRU B.Com LL.B(Hons*)
Lucknow 5th semester
Roll No.:- 49

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Acknowledgement

I shashi shekhar dixit student of B.Com LL.B(Hons*) 5 th Semester has made this
assignment under the guidance ship of shail shakya Sir , who is my subject teacher
for the intellectual property rights. I would like to express my special thanks of
gratitude to her who gave me the golden opportunity to do this wonderful project
on the topic , and also help me out with problems, which also helped me in
doing a lot of Research and I came to know about so many new things I am really
thankful to them.

I would also like to thank my friends for their constant support and help every
time.

Thanking You.

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TABLE OF CONTENTS

CASE LAW STUDIES

Conclusion

BIBLIOGRAPHY

(BOOKS)

(WEBSITE)

(JOURNAL)

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What constitutes a ‘design’?

‘Design’ is defined by statute to comprise features of shape, configuration, pattern, ornament or

composition of lines or colors applied to any article in two or three-dimensional form, or both, by
any industrial process or means – whether manual, mechanical or chemical, separate or
combined – which in the finished article appeal to and are judged solely by the eye.

This definition specifically excludes any mode or principle of construction, anything which is in
substance a mere mechanical device, any trademark or property mark or any artistic work as
defined by the Copyright Act.

NATURE OF COPYRIGHT PROTECTION IN DESIGNS

“COPYRIGHT” is defined to mean ‘the exclusive rights to apply a design to any article in any
class in which the design is registered’1. This means that if a design is registered in respect of
several articles in one class, the proprietor of such design shall have the exclusive right to apply
the design to all of them.

The term “copyright” as defined under the designs act,2000 is to be contrasted with “copyright”
which is conferred on the author of an original literary, dramatic , musical or artistic work under
the copyright act, 1957 .The copyright in the aforesaid works projects the works from being
copied or reproduced, whereas the registration of design confers on the registered proprietor not
mere an exclusive right to copy or reproduce the design, but a monopoly to produce articles of
the class in which the design is registered with that design applied. The protection afforded by
designs act is more akin to the protection afforded to patent for invention by the patents act,
1970.

COPYRIGHT IN DESIGN AND DURATION

The registration of design confers on the registered proprietor ,copyright in the design for a
period of ten years from the ate of the registration. If ,before the expiration of the said ten years,
application for the extension of the period of copyright is made in the prescribed manner to the

1
Section 2(c),designs act ,2000.

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controller , the controller shall on payment of the prescribed fee, extend the period of copyright
for a second period of five years from he expiration of the original period of ten years. The total
duration of copyright in design shall not exceed 15 years. After 15 years, the design will fall in
public domain and will become public property.

The registration of a design confers following rights on the registered proprietor of a design:

(i) The exclusive right for the purpose of sale to apply the design to any article in any
class in which the design is registered;
(ii) The exclusive right to import for the purposes of sale any article belonging to the
class in which the design is registered and having applied to it that design;
(iii) The exclusive right to publish or expose , or cause to be published or exposed for sale
, any article in any class of goods in which the design is registered to which such
design is applied.

In Parle products private limited v. Suryafood & agro limited,2 the court observed that the
designs act, unlike the copyright act, gave monopoly protection in the strict sense of the word
rather than mere protection against copying as under the copyright act and though there was an
area of overlap between the copyright act and the designs act,the two acts did not give
coterminous protection as regards the subject-matter.

Registration of lapsed designs

Where a design has ceased to have effect by reason of failure to pay the fee for the extension of
copyright, the proprietor of such design or his legal representative may make an application for
the restoration of the design in the prescribed manner on payment of prescribed fee within one
year from the date on which the design ceased to have effect.

The application shall contain a statement which is to be verified in the prescribed manner and
fully setting out the circumstances which led to the failure to pay the prescribed fee. The
controller may require from the applicant such further evidence as he may think necessary.

2
2009(40)PTC 638 (Mad) (DB) at p.648

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Upon consideration of the application and the evidence adduced by the proprietor of the design,
if any, if the controller is satisfied that a prima facie case for the restoration of the design has not
been made out he shall intimate the proprietor of the design accordingly, and unless within one
month from the date of such intimation the proprietor requests to be heard in the matter, the
controller shall refuse the application.3

Where the controller is satisfied that the failure to pay the fee for the extension of the period of
copyright was unintentional and that there has been no undue delay in the making of the
application for the extension, he shall upon payment of unpaid fee as well as prescribed
additional fee, restore the registration of design4

Restoration of lapsed design: rights of proprietor

The rights of a proprietor of a lapsed design which has been restored shall be subject to such
provisions as may be prescribed and to such other provisions as the controller thinks fit to
impose for the protection or compensation of persons who may have begun o avail themselves
of, or have taken definite steps by contract or otherwise to avail themselves of, the benefit of
applying the design between the date when the registration of the design ceased to have effect
and the date of restoration of the registration of the design.

In addition, no suit or other proceeding shall be commenced in respect of piracy of a registered

design or infringement of the copyright in such design committed between such dates.5

Requirements before delivery on sales

The proprietor shall fulfill following requirements before delivery on sale of any articles to
which a registered design has been applied;

(i) He shall furnish to the controller the prescribed number of exact representations or
specimens of the design (if not furnished on the application for registration). If he
fails to do so, the controller may after giving notice thereof to proprietor, erase his
name from the register and thereupon the copyright in the design shall cease.

3
Rules 24,design rules, 2001.
4
Section 13,designs act, 2000
5
Section 14,designs act,2000

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(ii) He shall cause each such article to be marked with the prescribed mark, or with the
prescribed words or figures denoting that the design is registered. If he fails to do so,
he shall not be entitled to recover any penalty or damages in respect of any
infringement of his copyright in the design unless he shows that he took all proper
steps to ensure the marking of article, or that the infringement took place after the
person guilty thereof knew or had received notice of existence of the copyright in
design.6

Marking of articles with prescribed mark

Before delivery on sale of any article to which a registered design has been applied, the
proprietor of such design shall cause each such article to be marked with the word
REGISTERED or with the abbreviation REGD,, or with the abbreviation RD, as he may choose,
and also (except in the case of articles made of soft or brittle in nature to which have been
applied designs registered in different classes of articles) with the number appearing on the
certificate of registration.

Effect of disclosure on copyright

Section 16 of the designs act provides that certain disclosures made prior to the registration of
design shall not be deemed to be a publication sufficient to invalidate the copyright thereof. They
are:

(i) Any disclosure made in branch of faith by someone to whom the proprietor of the
design had disclosed the design in such circumstances as it would make it contrary to
good faith for that person to use or publish the design;
(ii) The acceptance of a first and confidential order for articles bearing a new or original
textile design intended for registration.

In gunston v. winox,7

6
Section 15,designs act,2000
7
(1921) 38 RPC 40 at p. 51.

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When disclosure of design is not deemed to be a publication

A disclosure of a design by the proprietor to any other person in good faith is not deemed to be a
publication of design sufficient to invalidate the copyright thereof if the registration is obtained
subsequently to the disclosure. The other person to whom the design has been disclosed if acts in
contrary to good faith in which the design was disclosed to him and uses such design or
publishes such design, such user and publication of design by the other person other than the
proprietor of the design by legal fiction under section 49 of the designs act, 1911

Inspection of registered designs

Rights conferred by registration

Registration confers the exclusive right to apply the design to any article in the class in which it
is registered. This right lasts for a 10-year period, which can be extended by five years.
Thereafter, the design becomes public property and can be used by anyone. It has been opined
that design rights were never protected by common law and thus confer a lesser monopoly than
ordinary copyright. A registered design is open to cancellation proceedings by any interested
person on the grounds that it is not registrable and/or does not qualify as a design.

s Available recourse includes filing suit to recover a nominal sum from the infringer as a contract
debt or seeking damages and an injunction against misuse of the design.

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Not every resemblance is actionable and imitation does not mean duplication. An obvious
imitation is one which immediately strikes one as being so like the original registered design as
to be almost indistinguishable. In contrast, the word ‘fraudulent’ presupposes knowledge of the
registered design.

To ascertain infringement, the two products need not be placed side by side, but rather examined
from the point of view of a customer with average knowledge and imperfect recollection. The
main consideration is whether the broad features of shape, configuration and pattern are similar
to one another (Veeplast v Bonjour, 2011). In some cases courts may also attempt to ascertain
substantial differences. Interestingly, the Delhi High Court (Micolube v Rakesh Kumar, 2013)
and the Calcutta High Court (Kent R-O Systems v Sandeep Agarwal, 2014) are at variance on
whether the registered proprietor of a design can institute a suit against another registrant; the
Delhi High Court takes the view (affirmed by the Bombay High Court in Whirlpool v Videocon,
2014) that there is no bar.

All grounds available to a person seeking cancellation may be adopted as a defence in

infringement proceedings. In Steelbird v Gambhir (2014) the Delhi High Court upheld the
defendants’ plea that the design was neither new nor original and thus not eligible for protection,
and vacated the interim injunction. The Madras High Court has observed that the remedies
available to a registered rights holder, the defence available to the opposing party and the nature
of the available reliefs are not clearly indicated in the Designs Act (MC Jayasingh v Mishra
Dhatu, 2014).

Implications of Infringement of the Act

If any individual/company infringes the provisions of the Act, for every count of infringement
they could be asked to pay a sum of Rs. 25,000/- (maximum) to the person who owns the design.

They could also be asked to pay an extra Rs. 50,000/- as ‘contract debt’ for any single design.

The total sum that is recovered from the payer should not exceed Rs. 50,000/-.

Case

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Faber-Castell Aktiengesellschaf (Sic) And A.W. Faber - Castell (India) Pvt. Ltd. vs.
Pikpen Private Limited

Back ground of case:

Faber Castell India began its operations in 1998 and was already touching the 1 crore annual
sales mark by 2003 [1] . One of the most popular products being sold worldwide by Faber-
Castell was the highlighter pen “TEXTLINER". Faber-Castell got the design for the pen
registered in India under the Designs Act, 1911 as on 01.08.1997 for a term of 10 years. The
unique features registered by Faber–Castell were as under-

A dark green body

A unique cap of the same colour as the colour of the ink in the pen

Gold lettering on the body

"TEXTLINER" which was the Trade mark written on the body of the pen.

Moreover, additional design specifications were also clearly mentioned, “The uniqueness resides
in the shape and configuration of the line marker; especially in the cap portion and the
ornamental surface on the plug at the bottom of the highlighter. The plug is that part of the
highlighter used for filing the fluorescent ink".

Since launching the highlighter in 1998, Faber-Castell claimed to have sold more than 35 million
pieces and spent around Rs. 6 lakhs on advertising, printing brochures and other marketing
activities. However, in October 2002, Faber-Castell discovered that it was sharing shelf-space
with another highlighter which had a striking resemblance with their brand. This highlighter pen
also went by the name, “TEXTLINER" and bore an uncanny similarity to the appearance of their
original product. It was being produced by a company called “Pikpen Pvt. Ltd." And Faber-
Castell found it as an invasion of their design.

Thus, Faber-Castell filed for-

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An injunction restraining Pikpen from infringing their registered design for the highlighter sold
by them under the trademark “TEXTLINER".

An injunction restraining the defendants from passing-off their highlighter by use of the
impugned trade mark "TEXTLINER" and by adopting the almost identical configuration, shape,
design, colour scheme and get-up for their product.

Course of action:

2.1. Injunction against infringement of design:

Pikpen’s first course of defense was that they challenged the ownership of the design. According
to them, A.W. Faber-Castell Gmbh & Co. held the ownership and not their subsidiaries in India
who filed the case.

Also, as the documents related to the design registration submitted by Faber-Castell was
translated from German, it didn’t mention the word “design" but “the appearance of goods"
which does not qualify for the definition of design.

Under the Design Act, 1911, (under which the pen’s design was registered) a design previously
not registered in India can be registered. However, under the Designs Act 2000, they are not
entitled to an injunction based on such a design which has been published in a country outside
India i.e. the U.S.A. as well as in India.

This was considered as a valid ground by the judge as when the Designs Act, 2000 was enacted,
it was done with a clause stating that the earlier act was repealed. Faber-Castell’s design was
liable for cancellation on account of the fact that it was published in India and also in the United
States prior to the date of its registration. They were therefore, not entitled to an injunction on the
ground of infringement of the design in view of the provisions of the Designs Act, 2000.

2.2 Injunction against passing-off:

According to Faber-Castell, they were a company of international repute and enjoyed great
goodwill since 1796 as a manufacturer of writing instrument. Because Pikpen was passing off

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their products as similar to Faber-Castell’s, there was likelihood of damage of reputation and
goodwill.

In order to arrive at the right verdict, it was important to understand whether Pikpen was
deliberately making a misrepresentation leading to deception and confusion thereby trying to
leverage the reputation of Faber-Castell and pass-off their products.

Faber-Castell not only sought an injunction on the infringement of copyright, but also on the
duplication of the uniqueness of the configuration/design of the highlighter.

Pikpen presented a front saying that the word “TEXTLINER" signifies the basic functionality of
the product and cannot be considered as an exclusive trademark as registered by Faber-Castell.
These two words taken separately are clearly descriptive. At the same time, prima facie, the
result of the combination is also descriptive. It is descriptive of the function which the said
product is intended to perform. For example, if the mark "running shoe" was used for any shoes,
it would signify the description of the goods even if the words "running shoes" were joined
together. Therefore, this contention was found to have validity.

However, with respect to the infringement of the design, and the claim of “passing-off", the
following factors were taken into consideration-

FABER-CASTELL

PIKPEN

“FABER-CASTELL"

“KOLORPIK"

“TEXTLINER 48 REFILL"

“TEXTLINER 999"

“PAPER-COPY-FAX"

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“PAPER-COPY-FAX"

The above words were written on the Pikpen product identically in the same golden colour and
font as Faber-Castell’s. Even the word “KOLORPIK" which appears drastically different, was
written in such a way that the arrangement of the letters was the same and it could confuse
anyone who looked at it comparatively.

Apart from the lettering, the cap looked almost similar. There was a minor difference i.e., a slight
curve at the end of the cap, but it is something which would hardly be distinguishable at the time
of purchase. Similarly, the size and colour of the plug at the bottom was the same. The only
difference was the absence of serrations on the Pikpen’s highlighter which is hardly noticeable,
especially when each individual item is put in a polythene bag. Further, the colour of the pens
was the same i.e. deep green. But this is a very minute difference. Since the product is not a high
involvement one, the chances of one identifying these small details is negligible.

Judgment/Verdict:

As mentioned above, the plea for injunction restraining Pikpen from using the trademark
“TEXTLINER" was not accepted.

However, under the Designs Act, 2000, “In the case of passing off, the defendant can escape
liability only if he can show that the added matter is sufficient to distinguish his goods from
those of the plaintiff."

Therefore, it was found that the case under consideration was adjudged as a case of deceptive
similarity and definite misrepresentation. The consequent damages by way of loss of sale,
goodwill, reputation, were bound to follow. Faber-Castell, therefore, had a case for the grant of
an injunction.

Passing off under Indian design law

Courts have long debated whether the common law remedy of passing off is available for
designs. In 1983 the Delhi High Court held that since no express provision for passing off is
mentioned, unlike in trademark legislation, it cannot be claimed by a plaintiff. Much later, the

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court in obiter took the view that rights in registered designs are set out in the Designs Act itself,
whereas passing off is established under common law. As a result, the rights are distinct and
different. It observed that the absence of an express provision does not mean that passing off is
not available under design law (Smithkline Beecham v Hindustan Lever, 1999).

In a recent case a majority of judges at the Delhi High Court opined that the remedy of passing
off is indeed available to the owner of a registered design if the design is used, post-registration,
as a trademark. It also stated that the remedy of infringement under the Designs Act and the
remedy of passing off are essentially different. Therefore, as the two remedies stem from
different causes of action, they cannot be combined in the same suit. However, the court did note
that if the two matters are instituted at close proximity to one another and the court has
jurisdiction in both matters, they can be heard together for the sake of convenience, albeit as
separate causes (Micolube v Rakesh Kumar, 2013). The High Court of Bombay affirmed this
decision, holding that an action for passing off is designed to protect the goodwill or reputation
stemming from the shape of goods (Whirlpool v Videocon, 2014).

Overlaps

The intersection between copyright and designs is an intricate area of law. While the Designs Act
confers protection for a limited period, the Copyright Act grants a higher level of protection to
works such as paintings and sculptures. To prevent any overlap, the Designs Act explicitly
excludes artistic works. Further, the Copyright Act provides that copyright shall not subsist in
any design which is registered under the Designs Act. Any subject matter that is capable of being
registered under the Designs Act but is not will lose copyright protection as soon as any article to
which the design has been applied has been reproduced more than 50 times through an industrial
process. This provision not only discourages parties from availing of protection under both acts,
but also ensures that anyone attempting to do so has both sets of rights extinguished.

Trademarks and designs are essentially different rights, in the sense that designs are more
concerned with an article’s appearance, while trademarks relate to the origin of the goods and
services. While the Designs Act expressly excludes trademarks, trademark law includes the
shape of goods within the ambit of a trademark, even though shapes which give substantial value

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to the goods are excluded from register ability. It thus cannot be said that a design, which
includes the shape of goods, can never be used as a trademark or not protected under trademark
law.

Case law

In Samsonite v Vijay Sales (1998) the court held that copyright could not be claimed in a set of
drawings and vacated the injunction granted against the defendants, since the suitcases at issue
were not registered under the Designs Act and had been reproduced over 50 times.

An injunction was denied in Taparia Tools v Ambica Overseas (2005) on the ground that novelty
had been claimed only in the shape and configuration in the registration, and not in the scale
marking on the wrenches. The court found that designs similar to the plaintiff’s wrenches and
pliers were present on the market before the design’s registration, and that the shape and
configuration of this design were dictated by function.

In Marico v Raj Oil (2008) the court held that caps were articles as defined under the Designs
Act and were “capable of being made and sold separately”. However, an injunction in this
instance was refused, since the rival caps were dissimilar.

In Troikaa v Pro Labs (2008) the defendant was restrained from manufacturing, marketing and
using tablets that were similar in shape and colour to the plaintiff’s tablet, as it had registered the
shape and configuration under the Designs Act.

In Mattel v Jayant Agarwalla (2008) the court held that the Scrabble board was an article capable
of design protection, but since more than 50 copies had been made and the design was not
registered, copyright protection for the design could not be claimed by the plaintiff.

In Whirlpool v Videocon (2014) the court found that the design of the plaintiff’s washing
machines was distinct and had garnered substantial goodwill in the market. Observing that the
definition of a ‘trademark’ includes the shape of goods, the court allowed the plaintiff’s claim of
design infringement and passing off against the defendant.

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In Jagdamba v Tristar (2014) the appellate court reversed the trial court’s decision with regard to
industrial drawings of the plaintiff’s machine and major components, holding that the drawing
was not entitled to copyright protection as more than 50 products had been manufactured by
applying the drawings to the machine.

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