The Designs Act 2000 is a complete code in itself and protection
under it is totally statutory in nature. The Designs Act gives
monopoly protection in the strict sense of the word rather than
mere protection against copying.
The significance of this case can be discerned by the fact that
the order adjudicating on an interlocutory application in
Micolube India Ltd vs. Rakesh Kumar & Ors. (I.A. No.
9537/2011 in CS (OS) No. 1446/2011; Delhi High Court) deemed it
appropriate to refer the questions raised to a larger bench for
The suit, originally filed before the District Court for
infringement of designs, was transferred to the High Court as the
defendant challenged the validity of the Plaintiff's registered
design. The defendant, who is in the same trade, challenged the
impugned design on the grounds as given under section 19 of the
Designs Act 2000. In addition to this, the defendant placed the
design registered in its name and submitted that in view of the
registration granted, the plaintiff is not entitled for any interim
The two line of defences raised by the defendant and considered
by the court were:
Maintainability of suit for infringement or piracy of the
registered design when both the plaintiff as well as the defendant
is registered proprietor of the designs.
Maintainability of Suit for Passing off along with suit for
infringement of registered designs.
The court undertook an extensive examination of nature and scope
of the Designs Act, 2000 (the Act), particularly with respect to
Section 22 (Piracy of registered design) of the Act, to
see whether the statutory right will hold good to fix on that an
action for infringement of design is maintainable only when the
plaintiff is a registered proprietor and the defendant is not. The
court observed that a plain reading of subsections 1 & 2 of
S.22 states that "any person" who contravenes S. 22(1)
and for whom it shall not be lawful to apply the said design to an
article must be the one in favour of whom the statute has not
conferred rights by providing design registration. In other words a
collective reading of S. 22(1) & (2) reveal that a registered
proprietor does not fall within the ambit of any person and
therefore cannot be held liable for infringement. Thus it is
inconceivable as to how S. 22(3) can be pressed into service to
invalidate the registration of design of such defendant who sets up
the registration as a defence in a suit, which is not maintainable
in the first place. Thus S 22(3) will operate only to examine the
validity of the design in infringement proceedings as a defence and
not beyond the same.
In view of the aforementioned discussion, on the plain reading
of S.22 as well as considering the purely statutory nature of the
proceedings under the Designs Act, it becomes clear that no suit
for infringement is maintainable against another registered
proprietor of the design as "any person" under S.22 has
to be other than the registered proprietor
On the defendant's second line of defence i.e. evaluation as
to whether there exists any remedy of passing off under the Designs
Act, the court observed upon testing the Design law on the
principals laid down by Hon'ble Supreme Court relating to
saving of common law and the rights under the statute prevailing
over common law unless it is saved expressly by a statute, that the
Designs Act does not expressly save the principles of common law of
passing off. The commentaries relating to design law explicitly
stating that remedy under Design law is purely statutory in nature
and the observations of the Hon'ble Supreme Court reveal that
the statutory remedies exclude common law until and unless saved
expressly, and the Designs Act cannot be said to be saving the
principles of common law of passing off and therefore the passing
off remedy cannot be made available to a party enforcing the
Designs right in the Designs Act, 2000.
Finally, the court deemed it appropriate to refer the following
questions to the larger bench:
Whether the suit for infringement of registered Design is
maintainable against another registered proprietor of the design
under the Design Act, 2000?
Whether there can be an availability of remedy of passing off
in absence of express saving or preservation of the common law by
the Design Act, 2000 and more so when the rights and remedies under
the Act are statutory in nature?
Whether the conception of passing off as available under the
Trade Marks can be joined with the action under the Design Act when
the same is mutually inconsistent with that of remedy under the
Design Act, 2000?
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
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