IPR
Topic 66 Design Infringement
Topic 66 — Rights, Infringement and Piracy of Designs
A registered design grants its proprietor an exclusive right — the "copyright in the design" — for the duration of the registration. The Designs Act 2000 uses the unusual term "copyright in design" (Sections 11, 22, 22A) rather than "patent" or "trademark" rights, reflecting the historical proximity of design law to copyright. The exclusive rights are codified in Section 22 — protection against piracy. Sections 22 and 22A define infringing acts ("piracy") and the available remedies. The Bombay HC in Travel Blue v. Miniso (31 July 2025), the Bombay HC in Pidilite v. Astral (13 June 2024), the Delhi HC Division Bench in Crocs v. Bata (1 July 2025) have substantially developed the operational standards for infringement assessment, the parallel passing-off claims, and the evidentiary requirements. This topic walks through the bundle of rights, the test for infringement (piracy), the available remedies, the recent jurisprudence, and the practical strategy for both proprietors and alleged infringers.
1. The Bundle of Rights — Section 11
Section 11(1) "When a design is registered, the registered proprietor of the design shall, subject to the provisions of this Act, have copyright in the design during ten years from the date of registration." |
A. The Concept of "Copyright in Design"
C COPYRIGHT in the design | 10 YEARS initial | +5 EXTENSION one renewal possible |
✅ "Copyright in design" — the historical name The Designs Act 2000 retains the historical term "copyright in design" — a vestigial usage from the era when designs and copyrights were governed together. This is conceptually distinct from copyright under the Copyright Act 1957. The "design copyright" is: · Term-limited (15 years maximum) vs. copyright's life + 60 years. · Registration-based vs. copyright's automatic protection. · Protects industrial articles vs. copyright's artistic works. · Subject to Section 15(2) crossover — if a copyright work is industrially reproduced more than 50 times, copyright lapses. Despite the shared terminology, the two regimes operate distinctly. Indian courts now sometimes use "design rights" instead of "copyright in design" to avoid confusion. |
2. Section 22 — Piracy of Registered Designs
Section 22(1) "During the existence of copyright in any design it shall not be lawful 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." |
A. Three Categories of Piracy
Sub-clause | Acts Constituting Piracy |
|---|---|
Section 22(1)(a) | Application of design / fraudulent or obvious imitation to articles for sale. |
Section 22(1)(b) | Import for sale of articles bearing the design / fraudulent or obvious imitation. |
Section 22(1)(c) | Publishing, exposing, or causing publication of articles known to bear infringing design. |
B. The "Fraudulent or Obvious Imitation" Test
Section 22 uses the phrase "fraudulent or obvious imitation". This is the operative test for design infringement:
- Fraudulent imitation — deliberate copying with knowledge of the registered design.
- Obvious imitation — even without intent, the imitation is so similar that it is "obvious" to ordinary observation.
- NOT exact replication — substantial similarity is sufficient.
- NOT minute differences — trivial variations do not avoid infringement.
✅ The "obvious imitation" standard The Indian "obvious imitation" standard is closer to the EU/UK "informed user" test than the strict literal-infringement standard. Indian courts apply: · "Substantially the same" approach — the impugned design must be substantially the same as the registered design. · "Eye of ordinary purchaser" — viewed from the average consumer perspective. · "As a whole" approach — overall visual impression, not feature-by-feature dissection. · Trivial cosmetic changes do not avoid infringement. This standard parallels the Bombay HC's ocular-appeal-as-a-whole doctrine in Pidilite v. Astral (2024) and Travel Blue v. Miniso (2025). |
3. Travel Blue v. Miniso — The Recent Authority
📖 Travel Blue Products India Pvt. Ltd. v. Miniso Life Style Pvt. Ltd., 2025 (Bom HC, 31 July 2025) Facts — Travel Blue had designed the Travel Blue Tranquility Neck Pillow in 2015 and secured design registrations across India and other jurisdictions, with novelty stated to reside in the shape and configuration of the "neck pillow with pocket". The design registration expressly clarified that the pocket was a mechanical feature with no design rights claimed in it. In August 2024, Travel Blue discovered Miniso's travel neck pillow (launched 2022) which was alleged to be a substantial imitation. Miniso allegedly also replicated the distinctive colour palette (grey, blue, purple, pink). Travel Blue filed an infringement and passing-off suit. Holding — Bombay HC found in favour of Travel Blue. Key holdings: (i) Design protection extends to ornamental features that may also have functional aspects, provided the EVERY feature is not solely dictated by function. (ii) Subject matter of design protection can develop a source-identifying function with sustained use — supporting parallel passing-off claims. (iii) Defendants' reliance on international registrations (without specific pleadings or supporting material) was insufficient to establish prior publication for cancellation purposes. (iv) Section 19(1)(a) cancellation requires prior REGISTRATION in India; mere international registration is insufficient. (v) Section 19(1)(b) cancellation requires prior PUBLICATION clearly evidencing the design — through brochures, books, or journals visually depicting the design. Order — Interim injunction granted; design infringement and passing off both established. Significance — Recent (2025) authoritative statement of the Indian design infringement framework. Confirms: · Functionality test — only "every feature solely dictated by function" excludes design protection. · Parallel passing-off claims viable for designs developing secondary meaning. · Cancellation grounds require specific evidentiary support — international registrations alone insufficient. |
4. Section 22A — Civil Remedies
Section 22(2) "If any person acts in contravention of this section, he shall be liable for every contravention— (a) to pay to the registered proprietor of the design a sum not exceeding twenty-five thousand rupees recoverable as a contract debt, or (b) if the proprietor elects to bring a suit for the recovery of damages for any such contravention, and for an injunction against the repetition thereof, to pay such damages as may be awarded and to be restrained by injunction accordingly: Provided that the total sum recoverable in respect of any one design under clause (a) shall not exceed fifty thousand rupees." |
A. The Two-Track Civil Remedy
1 CONTRACT DEBT ₹25K-₹50K cap | 2 DAMAGES SUIT unlimited + injunction |
- Section 22(2)(a) — recoverable as contract debt; capped at ₹25,000 per contravention; ₹50,000 maximum per design.
- Section 22(2)(b) — full damages suit; unlimited damages; injunction; the proprietor must elect this route to obtain injunction.
✅ Section 22(2) is unique to Indian design law The two-track remedy structure of Section 22(2) is unique. Most jurisdictions provide a single civil track with full damages and injunction. India's split: · Section 22(2)(a) — quick "contract debt" recovery for small infringements; capped at ₹50,000. · Section 22(2)(b) — full damages suit for substantial infringements. In practice, most Indian design infringement litigation proceeds under Section 22(2)(b) — the cap on Section 22(2)(a) is too low for meaningful protection. The provision was originally designed for street-level minor infringements but is rarely used today. |
B. Available Civil Reliefs
Through Section 22(2)(b) suit, the proprietor can obtain:
- Permanent injunction — restraining further infringing acts.
- Compensatory damages — actual loss to proprietor.
- Punitive damages — for wilful infringement.
- Account of profits — disgorgement of defendant's profits.
- Seizure / destruction — of infringing goods (similar to TM Act 1999).
- Costs — including under Commercial Courts Act 2015.
5. Crocs v. Bata — Parallel Passing-Off and Design Rights
📖 Crocs Inc. USA v. Bata India Ltd., 2025 (Del-DB, 1 July 2025) Facts — Crocs sued Bata India and other footwear manufacturers for infringement of Crocs' perforated and non-perforated shoe designs. Earlier (2019) Single Judge Decision — Held that Crocs' designs lacked novelty due to prior publication; injunction refused. Division Bench Holding (1 July 2025) — Upheld the viability of passing-off claims even where the subject matter is also covered by a design registration. The Court allowed parallel passing-off and design infringement claims. Significance — Confirms in 2025: (i) Design + passing-off claims can coexist as parallel rights. (ii) Design rights and trade dress / passing-off operate independently — failure of one does not preclude the other. (iii) For designs developing source-identifying function, passing-off provides additional protection beyond design term. |
A. The Coexistence of Design and Passing-Off
Travel Blue (Bom 2025) and Crocs (Del-DB 2025) together establish:
- Design registration provides primary protection for ornamental features.
- After sustained use, the design may develop secondary meaning (source identification).
- Passing-off claim provides parallel protection where design registration is challenged.
- Combined approach maximises protection — design + passing-off + trademark (where get-up has acquired distinctiveness).
6. Procedure for Infringement Suits
A. Forum and Jurisdiction
Design infringement suits proceed:
- District Court — within pecuniary jurisdiction.
- High Court — above pecuniary limit; or where defendant counter-claims for cancellation under Section 19.
- Commercial Courts (district level) — Commercial Courts Act 2015 framework.
- IP Division benches (Delhi HC, Bombay HC) — preferred forums for substantial design disputes.
B. Pleadings
A design infringement plaint typically includes:
- Plaintiff's registered design particulars (registration number, date, class).
- Sample drawings or photos of the registered design.
- Defendant's impugned product/article.
- Comparison establishing fraudulent or obvious imitation.
- Volume of defendant's sales (if known).
- Date of plaintiff's sales since registration.
- Damages calculation.
- Reliefs sought — interim injunction; permanent injunction; damages; account of profits.
C. Interim Injunction
Indian courts apply the standard three-prong test for interim injunction in design cases:
- Prima facie case — registered design + clear imitation.
- Balance of convenience — favours plaintiff.
- Irreparable injury — design is being copied; goodwill at stake.
7. Defences to Design Infringement
Defence | Substance |
|---|---|
Lack of registration | Plaintiff's design not registered (Crocs 2019). |
Section 19 cancellation grounds | Prior registration; prior publication; not new/original; not registrable; not a design. |
No infringement | Defendant's product not "fraudulent or obvious imitation" — substantially different. |
Functional features | Plaintiff's claimed features dictated by function (Travel Blue 2025 standard). |
Independent creation | Defendant created similar design independently without copying. |
Acquiescence / delay | Plaintiff sat on rights after knowledge. |
Innocent infringement | Defendant did not know of registration; ceased on notice. |
Section 22 limited remedies | For pre-1 January 2024 acts, limited monetary remedies. |
✅ Section 19 cancellation as central defence Just as Section 64/Section 107(1) revocation is the most powerful patent defence, Section 19 cancellation is the most powerful design defence. Defendants in infringement suits typically: · File counter-claim for cancellation under Section 19. · Plead one or more of the five grounds (prior registration, prior publication, not new/original, not registrable, not a design). · Court typically transfers infringement + cancellation to High Court. · If cancellation succeeds, design is invalidated AND infringement claim fails. For effective cancellation defence, identify clearest prior art — Indian or foreign published designs predating registration. |
8. Criminal Provisions — Section 22A
Section 22A "If any person, other than the proprietor of a registered design, any agent or licensee, sells or attempts to sell any article in respect of which the design is registered, the application of the design to which is in contravention of section 22, he shall be punishable with imprisonment for a term which may extend to two years, or with fine which shall not be less than fifty thousand rupees and which may extend to one lakh fifty thousand rupees, or with both." |
A. Criminal Offences for Design Piracy
Section 22A criminalises sale or attempted sale of articles infringing registered designs:
- Imprisonment up to 2 years.
- Fine ₹50,000 to ₹1,50,000.
- Or both.
✅ Section 22A — added through subsequent amendment Section 22A was added to the Designs Act through subsequent amendment. The criminal track: · Is rarely used in practice — design piracy is primarily a civil-track matter. · Has limited applicability — specific to commercial sale of infringing articles. · Co-exists with civil remedies — proprietor can pursue both. · Compoundable — parties can settle through compromise. For commercial design piracy, civil remedies (damages + injunction) are typically more effective than criminal prosecution. Criminal track is reserved for organised counterfeiting cases — particularly for luxury brand counterfeits. |
9. Practical Strategy
✅ For design proprietors — twelve points Maintain detailed records of design creation, publication, and sales — supports Section 22 enforcement. Conduct regular market surveillance for infringing products. Document sales of own products to establish reputation and damages baseline. For early infringements, send cease-and-desist letters; consider Section 22(2)(a) "contract debt" route for quick recovery. For substantial infringements, pursue Section 22(2)(b) full damages suit + injunction. Combine design registration with trademark (for source-identifying features) and passing-off claims. For renewal, calendar 10-year mark + 5-year extension deadline. For high-value designs, consider international registrations (currently country-by-country). For ongoing development, file new designs for variations — broader portfolio. For litigation, prepare evidence of fraudulent or obvious imitation through expert visual analysis. For damages, document plaintiff's sales decline + defendant's sales (where available). For criminal track, coordinate with police; document specific commercial sales of infringing articles. |
✅ For alleged infringers — eight points Section 19 cancellation defence — file counter-claim with strong prior art. Demonstrate substantive differences — not "fraudulent or obvious imitation". Show functional dictate — features solely dictated by function, not design choices. Document independent creation — sketches, design briefs, dated documents. For prior publication defence, find verifiable foreign or Indian publications predating registration. For acquiescence defence, document plaintiff's knowledge and inaction. For settlement, consider voluntary licensing arrangements rather than full litigation. For commercial purposes, monitor design databases and renewal status — many lapse and become public domain. |
🎯 EXAM POINTERS — TOPIC 66
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