Section 22 of Design Act, 2000 addresses the piracy of registered designs, outlining the legal consequences for unauthorized use of a registered design. It prohibits any person from applying or imitating a registered design, or any fraudulent or obvious imitation thereof, to any article in the same class of goods for which the design is registered, without the consent of the registered proprietor, during the term of the design's registration. Such acts, including selling, importing, or exposing articles with the pirated design, are deemed unlawful. The section provides remedies for the registered proprietor, including the right to seek an injunction, damages, or compensation up to ₹50,000 (subject to a maximum of ₹2 lakh per design) and empowers courts to grant relief in cases of infringement which ensures protection of the designer's intellectual property rights.
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What is Section 22 of Design Act?
Section 22 of Design Act, 2000 addresses the piracy of registered designs which refers to the unauthorized use or imitation of a registered design, constituting an infringement of the copyright in the design. Below is a detailed explanation of the section:
Section 22(1): Acts Constituting Piracy of Registered Designs
During the existence of copyright in a registered design, it is unlawful for any person, without the license or written consent of the registered proprietor, to:
Apply or cause to be applied the registered design, or any fraudulent or obvious imitation thereof, to any article in the class of articles for which the design is registered, for the purpose of sale.
Import for sale any article belonging to the class in which the design is registered, to which the design or a fraudulent or obvious imitation has been applied.
Publish or expose for sale any article in the class of articles, knowing that the registered design or a fraudulent or obvious imitation has been applied to it without the proprietor's consent.
These acts are considered piracy only if done for commercial purposes (e.g., sale) and not for personal use. The infringement of design under the Designs Act, 2000 is assessed from the perspective of an average customer with imperfect recollection, focusing on whether the imitation creates confusion by resembling the registered design.
Section 22(2): Remedies for Piracy
If any person contravenes Section 22(1), they are liable for every instance of piracy, and the registered proprietor has two alternative remedies:
Monetary Compensation: The infringer must pay the registered proprietor a sum not exceeding ₹25,000 per contravention, recoverable as a contract debt, with a cap of ₹50,000 for any single design.
Suit for Damages and Injunction: The proprietor may file a civil suit for recovery of damages for the infringement and an injunction to prevent further unauthorized use of the design.
The proprietor must choose one of these remedies, as they are mutually exclusive. Suits for piracy must be filed in a court not below the level of a District Court, and if a defense under Section 19 (grounds for cancellation of design registration) is raised, the case is transferred to a High Court for adjudication.
Section 22(3) and (4): Defenses
In any suit or proceeding under Section 22(2), the defendant can raise defenses based on grounds for cancellation of the design registration under Section 19, which include:
The design was previously registered in India.
The design was published in India or elsewhere before registration.
The design is not new or original.
The design is not registrable under the Act.
The design does not meet the definition of a design under Section 2(d).
If such a defense is raised, the court must transfer the case to the High Court for a decision.
Section 22(5): Court Decree
When a court issues a decree in a suit under Section 22(2), it must send a copy to the Controller of Designs, who will record it in the register of designs.
Learn about the Design Protection in IPR.
What Constitutes Piracy Under Section 22 of Design Act?
Section 22(1) of the Design Act prohibits three main acts during the existence of copyright in a design. These acts must relate to articles in the same class as the registered design and be done without the registered proprietor's consent. The focus is on commercial intent, such as sale or enabling sale. Courts assess imitation by the "eye test," determining if the imitation is obvious or fraudulent from a customer's perspective, without needing expert evidence:
Application for Sale: Applying or causing the application of the design or a fraudulent/obvious imitation to any article in the registered class for sale purposes, without the proprietor's license.
Importation for Sale: Importing articles bearing the design or imitation without consent.
Publication or Exposure for Sale: Knowingly publishing or exposing for sale articles with the applied design or imitation.
Major Provisions and Remedies in Section 22 of Design Act
Section 22(2) of the Design Act provides remedies for contravention, offering proprietors flexibility:
Contract Debt Recovery: The infringer pays up to ₹25,000 per contravention, recoverable as a contract debt, with a cap of ₹50,000 per design.
Suit for Damages and Injunction: If elected, the proprietor can sue for damages and an injunction to prevent repetition.
Suits must be filed in a court not below the District Judge level. This ensures specialized handling of design disputes.
The table given below provides the penalties, emphasizing the objectives of Designs Act which is to deter infringement while capping liability for fairness:
Remedy Type | Amount/Details | Limitations/Caps |
Contract Debt | Up to ₹25,000 per contravention | Total not exceeding ₹50,000 per design |
Damages via Suit | As awarded by court | Accompanied by injunction |
Jurisdiction | District Judge or higher | No lower courts |
Defenses and Cancellation Grounds Under Section 22 of Design Act
Section 22(3) allows defendants in infringement suits to raise any ground for cancellation under Section 19 as a defense. These include:
Prior publication or registration in India.
Lack of novelty or originality.
Not qualifying as a "design" under the Act.
If such defenses are raised, Section 22(4) mandates transfer to the High Court for decision, overriding the second proviso in subsection (2). This ensures validity issues are handled by higher judiciary. Subsection (5) requires courts to notify the Controller of decrees, updating the register.
Read about the Difference between industrial Design and Patent.
Judicial Interpretations of Section 22 of Design Act
The courts have interpreted Section 22 of Design Act 2000 and protected registered designs while balancing defenses like prior publication. Like, In Reckitt Benckiser v. Wyeth (2013), the Delhi High Court clarified that prior publication requires tangible disclosure of a design’s form or use of the designer and not mere foreign registry existence. Similarly, in Micolube India v. Rakesh Kumar (2013), it was established that infringement suits can target registered proprietors and allowed passing off claims alongside design claims. Let's look into the details of these cases:
Reckitt Benckiser (India) Ltd. v. Wyeth Ltd. (2013)
Reckitt sued Wyeth for infringing its S-shaped spatula design. Wyeth defended by citing prior foreign registrations as "prior publication" under Section 19(1)(b). The Delhi High Court held that mere existence in foreign registries doesn't constitute prior publication unless it provides sufficient visual clarity of the design's tangible form or use. Publication must be in a "tangible form" or "by use," judged case-by-case. This narrowed "prior publication," protecting designs unless clearly disclosed abroad.
Micolube India Limited v. Rakesh Kumar (2013)
In this case, the Delhi High Court addressed whether infringement suits are maintainable against another registered proprietor under Section 22 of Design Act. The Full Bench ruled that the term "any person" broadly include subsequent registrants. It also held that passing off remedies are available if elements like goodwill and misrepresentation are proven, even along with the design claims but provided that they do not conflict with the scheme of the Design Act.
TTK Prestige Ltd. v. Paristone (2023)
The Delhi High Court granted an injunction against Paristone for pirating Prestige's pressure cooker design under Section 22(1) of Design Act. The court applied the "eye test" and found obvious imitation in shape and configuration. It also restrained trade dress imitation, highlighting passing off risks in similar visual presentations.
S.D. Containers Indore v. Mold Tek Packaging Ltd. (2020, Supreme Court)
The Supreme Court interpreted the "High Court" in Section 22(4) as the territorial High Court, even without original civil jurisdiction. It resolved conflicts with the Commercial Courts Act, 2015 and emphasized transfer for validity challenges in order to ensure consistent adjudication.
These cases shows that while Section 22 provides strong protection, defenses like prior publication must meet strict evidentiary thresholds.
Summary
Section 22 of Design Act, 2000 addresses piracy of registered designs in India. It prohibits unauthorized use, imitation or sale of articles bearing a registered design without the consent of the proprietor. It applies to commercial activities and offers remedies like monetary compensation or civil suits for damages and injunctions. Defenses include prior registration, publication or lack of originality, with validity disputes transferred to High Courts. Judicial interpretations, such as in Reckitt Benckiser and TTK Prestige, emphasize visual similarity and strict evidentiary thresholds which ensures robust protection for design proprietors.
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Section 22 of Design Act: FAQs
Q1. What is Section 22 of the Copyright Act?
Section 22 says a copyright in a work lasts for the author's lifetime plus 60 years after their death.
Q2. What is Section 21 of the Designs Act?
Section 21 allows a registered design owner to surrender their design registration voluntarily by notifying the Controller.
Q3. How can I cancel the registration of a design under the Designs Act, 2000?
A design registration can be canceled by filing a petition with the Controller, proving grounds like prior publication or lack of originality under Section 19.
Q4. What is the penalty for design piracy under the Designs Act?
Piracy of a registered design can lead to a fine up to ₹50,000 or damages payable to the design owner under Section 22.
Q5. Is an offense under the Copyright Act bailable or not?
Copyright Act offenses, like infringement, are generally bailable, but it depends on the specific case and court discretion.
