Section 22 of the Designs Act, 2000, lays down the acts which amount to piracy of Designs. It provides that during the existence of copyright in any 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 of articles in which the design is registered, the design or any fraudulent or obvious imitation thereof, except with the licence or written consent of the registered proprietor, or to do anything with a view to enable the design to be so applied; or
(b) to import for the purposes of sale, without the consent of the registered proprietor, any article belonging to the class in which the design has been registered, and having applied to it the design or any fraudulent or obvious imitation thereof; or
(c) knowing that the design or any fraudulent or obvious imitation thereof has been applied to any article in any class of articles in which the design is registered without the consent of the registered proprietor, to publish or expose or cause to be published or exposed for sale that article.
On November 9th, 2010 the Delhi high court in the case of Schreder S.A & One Another v. Trilok Chand & Sons Pvt. Ltd, applying the abovementioned Section found Trilok Chand & Sons Pvt. Ltd's (defendant) product similar to Schreder's (plaintiff) design and as a result passed an interim order in favour of Schreder S.A & One Another thereby restraining Trilok Chand during the pendency of the suit from selling the product under any other name and model.
Schreder is the registered proprietor of a design, in respect of a lighting apparatus, which it manufactures and sells under the name "ALURA". The design had initially been registered w.e.f 15th May, 2000 and was valid for 5 years. As per the provisions contained in section 11 (1) of Designs Act, 2000, which came into force on 11th May 2001, the copyright registration became valid for 10 years from the date of registration. On 12th April, 2010 vide an application Schreder applied for the renewal of the aforesaid registration. In view of the provisions contained in Section 11(2) of the Designs Act, 2000 the Controller on payment of the prescribed fee, is obliged to extend the period of copyright for a second period of 5 years from the expiration of the original period of 10 years fixed under sub section (1) of the aforesaid section.
The fact that the design was initially registered in the name of "FINANCIERE DES APPLICATIONS DE L" ELECTRICITE S.A.", and that the name of the aforesaid company had since been changed to "SCHREDER S.A." was acknowledged by the defendant in the application filed for revocation of the registration in the name of the plaintiff.
A local commissioner appointed by the Court in order to inspect the premises of the defendant, found documents including a catalogue/ brochure in the premises of defendant, which showed one model of post top lantern, named "VENICE HYT-01".
Upon a bare perusal of the model shown as "VENICE HYT-01" in the catalogue/ brochure found in the premises of the defendant and its comparison with the registered model of the plaintiff being sold under the name "ALURA", the Court found that it was identical to the design of the model of the plaintiff.
Trilok Chand contended that "VENICE HYT-01" was a Chinese product and was not being sold by him. However, the Court said that the very fact that the Brochure/Catalogue found from the premises of Trilok Chand showed "VENICE HYT-01", indicated a reasonable possibility that it was being sold in the market by him. The Court further opined that even if he was not manufacturing the product, it's similarity in design to that of Schreder's product negated the right to sell it in the Indian market.
The court then observed, that although the defendant had sought for the revocation of Schreder's design registration, nevertheless so long as that application is pending and the registration granted to the plaintiff is not revoked, then, Trilok Chand had no right to sell a product, which has a design identical with the registered design of Schreder's product. The Court, accordingly, passed an interim order and directed the parties to appear before the joint registrar for admission/denial of the documents.
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