Legal Notice for Design Infringement in India

Design is an art which gives a visible form to the ideas of the mind or invention.  Thus, an Industrial design rights are defined as the part of the intellectual property rights which confers the rights of exclusivity to the visual designs of the objects. It guards the appearance, style, design of the industrial object such as spare parts etc. In accordance with the patent law it means, the drawing, shape, model, pattern to be used in the places where designs are applicable. 

Introduction 

The design may consist of three-dimensional features such as shape or surface or two dimensional features such as patterns, lines or combination of colours. If the article is not mass-produced the design cannot be used or applied on the object or product and such design shall be considered as an artistic work. Some designed logo shall be qualified for availing protection under trademark. The law protecting designs was governed by the Designs Act, 1911 which has now been replaced by the Designs Act, 2000 which came to force from 2001. 

Features of the Designs Act, 2000

• By registration, the design gets protected 
• There shall be prohibition if the design replicates any other registered designs 
• It provides 15 years as the maximum term of protection 
• Identification of non-registrable design 
• Provision for Electronic designer register 
• It provides information as to registered designs
• With controllers order, the appeal shall be taken to the High Court 
• Infringement provision 

Essentials characteristics of design 

• It relates to features or outward appearances only 
• It includes only the shape, configuration, patterns 
• It applies to any manual, mechanical, chemical or combined chemical 
• There shall be no principle for constructing a design 

Rights granted to design holders  

The designs developed are covered under Designs Act, 2000 and the Designs Rule, 2001. The given statutory right enables the owner to make use of the design. The holder of this legal title has the exclusive right to make, import or sell any objects to which the design is applied. This kind of exclusive rights are conferred on a design is called copyright in design. The one who has a registered design, shall grant permission by importing or by selling or applying it over any product. One can transfer the rights of the industrial designs to other person or third party. 

How to decide infringement?

Thus any fraudulent or obvious imitation of a registered design without the consent of the proprietor is unlawful and also prohibits the import of such material which closely resembles a registered design. The design applied must be an imitation of the registered design. In case of fraudulent imitation the imitation needs not be obvious, yet it is sufficient, that is to say the imitation has made with the intention to deceive another person by sabotaging the legal rights of the owner. 

Infringement of Design 

During the existence of copyright any design shall not be lawful for any person to do the following acts without the consent of the registered design – 

• Applying for registered with the means of any fraudulent or obvious imitation. 
• Using the registered design over other materials without the approval of the owner of the design 
• To publish or expose the registered design with a fraudulent intent.  

Remedies against the infringement 

Two alternatives are available against the infringement against the piracy of the registered design 

• Section 53(2)(a) – the infringed design or the infringer shall be liable to pay a fine to the owner of the design.
• Section 53(2)(b) – the owner of the design shall file a suit of recovery in an appropriate jurisdiction and shall be eligible to claim a recovery if the owner succeeds proving the design is infringed. 

Monetary remedy

Infringement of a copyright in a design is called piracy of design. In case of the piracy of the registered designs, the aggrieved proprietor shall file a suit to recovery suit and the person who has infringed the design shall be liable and put with a penalty not exceeding to INR 25, 000 and maximum of INR 50, 000. 

Format of the legal notice on design infringement

Ingredients of a design infringement notice

 Legal notices are sent for various purpose and the particulars of each notice differ from each other. Thus to draft an infringement legal notice, the contents shall be as follows – 

• Name of both parties
• The work protected by the design
• Date of creation of the work
• Date when the work was first published
• Date of design registration 
• Description of the violation of the design (include every details such as colour, size, slogans etc)
• Demands placed over the infringed party (Monetary remedies)
• Demands with respect to the course of action to be taken by the infringing party with a view to cease the violation of rights of the design holder

Format

Address date and place

Subject – Cease and desist notice for design infringement.

To,

M/s XYZ,

I/ my/ our client, _____________, am the sole owner of _______________ which is in the form of a _______________ and I/ my/ our client retains all the rights of this copyrighted design work. I/ my/ our client have published on ______________ and it was first published on _____________ I got my work registered under Designs Act, 2000 on ________________. It has come to my notice that, you_______________, has been making an unauthorized usage of the work I/ my/ our client has published. I have not granted permission to you for utilization of the published work and under section 53 of the design Act, 2000, I/ my/ our client as the sole registered design holder, reserve the right to distribution of my registered design work.

I would like to bring to your notice that, since your act amounts to infringement of my/ our client’s legal rights granted under section 53 of the Designs Act, 2000, you are held liable to a fine ranging from INR ________________________ and also failing which criminal charges shall be pressed against you.

Further, I hereby, demand that you,

1. cease the unauthorized use of my registered design work;
2. provide me with a written assurance that you will desist from making any further unauthorized use of my registered design work;

My Client calls upon you to immediately act upon the requisitions stated above and compensate my Client for the loss suffered by my Client, I/ my/ our client hope that you understand the civil and penal charges that such an infringement of my legal right attracts and hope that you will work on the issue expediently. I/ we look forward to hearing from you within fifteen (15) days hereof that you shall comply with all of the requisitions set herein above. We hope to resolve the issue amicably. Should you wish to discuss this matter, please feel free to contact at the email/ phone number as mentioned 

Yours Sincerely,

Advocate