Who Will Bell The Copycat?

Please select a featured image for your post

We all agree that imitation is the best form of flattery, but not when it comes to lifting designs en masse. Plagiarising jewellery designs from top domestic or international manufacturing houses and designers is a rampant problem in the Indian gem and jewellery industry. The ‘copy and paste’ culture is so deep-rooted that the imitator does not even think for a moment that he or she is committing a crime. The designers, on the other hand, wring their hands helplessly for they don’t know how to bring the defaulter to book. It is embarrassing that this happens in a country like ours which has a rich and diverse culture and there is no dearth of material for inspiration. Adopting short-cut methods such as copying indicates that manufacturers pay scant importance to design and therefore, do not hire qualified artists; or it reveals an acute paucity of original ideas. SHANOO BIJLANI and ALIYA LADHABHOY met advocate KINSHUK JAIN, a legal patent and intellectual property rights expert, at the Jaipur Jewellery Show, and learnt about the ways one can seek legal protection for a design, and the method of going about getting it registered.

Citing an anecdote that was recently settled out of court, Kinshuk Jain informed that last year a top jewellery manufacturer from Jaipur saw a copy of his registered design at the booth of another exhibitor at the JJS. “The manufacturer, who had got the design registered with my help, asked me to send them a notice. The plagiarist apologised profusely and the case was settled with just an unconditional apology from him”, Jain said, adding, “Indian manufacturers are slowly becoming aware of the various possibilities of tackling the widespread problem of ‘copy and paste’.”

“Lack of awareness, in general, about copyright issues concerning design and technological innovations is the main reason why the one who copies gets away; the aggrieved party, who invests time, money and manpower in designing an original piece, is left high and dry.”

Why did the Jaipur manufacturer let go of the opportunity to take the proceedings to its logical conclusion? “He was gracious enough to pardon the plagiarist firm. But it would have been a landmark case in India had he pressed on with the matter. Design houses do not realise that once they get their designs registered they can reap a lot of benefits out of it – they can actually seek an injunction as the first step. You can stop the person from producing imitations of your design. The next step is to file a suit for damages, wherein the court awards you a handsome amount towards the loss suffered in business as the defaulter is using your intellectual property,” Jain said.

Where do you apply for registering a design?

To ensure that you are not copied en masse you should register your design as it gives you protection under the Designs Act, 2000 at the patent office, Intellectual Property of India in Kolkata. The design cell undertakes a search procedure to check if there are similar designs already existing. After obtaining the search report, the manufacturer can file an application for registration of the design.

How long does the entire procedure take?

Usually it takes around six months for a design to get registered. After the application is filed, an application number is allotted to the applicant. Subsequently, the design is marked for examination and later, the Controller goes through the concerned design, to check if it can be registered or not. Once he is satisfied that the design can be registered, the design gets published in the official gazette, a public document, and a certificate of registration of design is issued by Controller General of Patents, Designs and Trademarks.

If anyone feels that the design is not original, he/she can counter the claim by filing a petition for cancellation of registration of the design stating his/ her reasons for the same along with evidence.

After a hearing is conducted, the Controller decides the petition and the opposition and notifies his decision to the parties.

Where is this gazette circulated?

The gazette is available on the official website of Controller General of Patents, Designs and Trademarks, Ministry of Commerce and Industry, Government of India at: ipindia.nic.in, wherein you can file the application for registration of trademarks, copyright, and other intellectual property rights. Registered designs are open for public inspection only after publication in the official gazette on payment of a prescribed fee of I500 on a request in Form-5.

On what basis can one file a suit for copying a design?

If a substantial part of the original design has been copied, then you can send the plagiarist a notice stating that this is your design. You have to support the claim with the registration number, to establish that you are the owner of the design. The notice requires the defaulting party to immediately stop the production of the said piece. If the defaulter ignores the notice, a suit can be filed in the court of law. First, you can file a suit for injunction, and then the suit for damages.

Is the Indian jewellery industry finally waking up to address the growing issue of copycat designers/firms? Do you regularly work for any jewellery firms?

I have been working in this industry since 2006 and I am associated with many jewellers in Jaipur, for not just design registration, but intellectual property rights as well. I have also recently filed an application on behalf of Le Vian, a New-York based firm, who has sued an Indian firm for using Le Vian’s Chocolate Diamonds branding.

Frankly, there are only a handful of jewellers who are aware about the design registration procedure in India. Big-time manufacturing houses like Birdhichand Ghanshyamdas Jewellers, Derewala and others are spending a handsome amount every year to get their designs registered. It makes sense to invest some money on protecting your design rights. The cost to register a design is meagre as compared to the amount of money, talent, research and man-hours spent on designing it.

There is a lack of awareness about intellectual property rights. Jewellers don’t understand that once you get a design registered, you are the sole proprietor of it, akin to being the owner of the house. And just as you can let the home out on rent and earn money, you can license your design and earn royalty on it. Designs can be purchased, and they can be licensed. The avenues are many.

How does registering a design safeguard the interests of a designer/manufacturer?

Once your designs are registered, they get the tag of exclusivity. Mind you, purchasing copied jewellery is similar to buying a pirated CD of a movie for which you can be prosecuted under the law. Similarly, purchasing a ‘pirated’ version of the jewellery that is registered under the Design Act, 2000 is also a violation of the law. But unfortunately, there is a lack of awareness among customers as well as the people who are copying it.

More importantly, you raise the value of your company, and make it visible to investors and management. Moreover, in a possible conflict with a competitor, your position is much stronger when you can document your ownership rights.

Is there a difference between patenting and registering a design?

Yes. Patents are totally different. A Patent is a set of exclusive rights granted by a state to an inventor or his assignee for a fixed period of time in exchange for a disclosure of an invention. “Invention” means any new and useful- (i) art, process, method or manner of manufacture; (ii) machine, apparatus or other article; (iii) substance produced by manufacture, and includes any new and useful improvement of any of them, and an alleged invention.

Whereas “Design” means only the features of shape, configuration, pattern or ornament or composition of lines or colour or combination thereof applied to any article whether twodimensional or three-dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye, but does not include any mode or principle or construction or any thing which is in substance a mere mechanical device, and does not include any trademark or artistic works. Let me give you an analogy of a car and application of various Intellectual Property Rights (IPR) on it – the technology used in engine can be patented; while the external shape of the car gets registered for its design; the name of the vehicle is the trademark, and its artistic logo is the copyright.

What are the penalties/damages paid to the aggrieved party?

Once a design is registered, it gives the legal right to bring an action against those persons (natural/legal entity) who infringe the design right, in the Court

not lower than District Court in order to stop such exploitation and to claim any damage to which the registered proprietor is legally entitled. However, it must be noted that if the design is not registered under the Designs Act, 2000 there will be no legal right to take any action against the infringer under the provisions of the Designs Act, 2000. If anyone contravenes the copyright in a design he is liable for every offence to pay a sum not exceeding I25,000 to the registered proprietor subject to a maximum of I50,000 recoverable as contract debt in respect of any one design. The registered proprietor may bring a suit for the recovery of the damages for any such contravention and for injunction against repetition of the same.

Is there any cap on the number of designs that can be registered? And for how long can you have the design rights?

No, there is no such limit. Any number of designs can be registered.

Once you get your designs registered, you get the right for 10 years for that particular design. And it can be further renewed for a period of 5 years. So in all, the design rights are yours for 15 years. After that, the design goes into the public domain.

What is the cost of registering a design?

It is nominal. The search fees are I1,000, the cost of filing an application is I1,000. Plus, the professional fees of a lawyer who can advise and file the papers anywhere from I11,000 onwards. For renewing the design for another five years, one needs to file a renewal application for I2,000 only.

Does a manufacturer have to go through a lawyer?

No. He can file the application on his own, but then there are a lot of legalities involved, so it is better that he engage the help of a professional.

So far, have you fought a case that has reached its conclusion?

Unfortunately, the answer is no. More often than not, out of court settlements are reached and things get sorted between the two parties. But I wish the aggrieved party would put its foot down and set an example for the industry. At the end of the day it is going to benefit them all.

FAQs for registering a design, a guideline from the Design Off ice, Intellectual Property India.

What is design?

  1. It is that aspect of an article which possesses new shape or ornamentation with aesthetic look and not dictated by technical or functional necessity.
  2. It may consist of three-dimensional features like shape or configuration; or two-dimensional features like patterns, ornamentation, lines or colour that can be judged by the human eye.
  3. The design must be reproducible by industrial means.

What can be registered as a design?

  1. To qualify for registration as a design, an article should relate to the ornamental or new shape, surface pattern, lines or colour with aesthetic look (designs of industrial plans, layouts or installation are not registrable).
  2. It should be applicable to any product reproducible by industrial means (paintings, sculptures and ‘works of art’ excluded).
  3. It should have features of aesthetic appearance in the finished products that are capable of being judged by the human eye.
  4. It should not include modes or principles related to construction, operations or mechanical devices and should not include any Trademark, Property Mark or any artistic work as defined in the Copyright Act.
  5. It can be a part/component of an article, provided it is manufactured and sold separately.
  6. The design should be new or original, not previously published or in use in any part of the world as on the date of application.

What are the benefits of registration?

  1. Your registered design is a very valuable commercial asset. As the owner, you have an exclusive right against its unauthorised copying or imitation by third parties and can take legal action against any infringement. Without registration, this right is not available under The Designs Act, 2000.
  2. You can use, sell or license its commercial advantage. You can develop its markets further with the confidence of the protection offered through registration.
  3. Designs are relatively simple and inexpensive to develop, and therefore reachable by small and medium size enterprises also and even to individual craftsmen.
  4. Design Rights benefit not only the owner but also the consumer because new designs are encourage and the economy grows by the expansion of products with varieties.

Who can apply for registration?

Any person or organisation can apply for registration of a design in the prescribed form accompanied with its fees to the Design Office.

What is the duration of registration and can it be cancelled?

  1. On registration, exclusive rights are granted for a period of ten years, renewable for another five years by application in prescribed manner.
  2. An application for cancellation of a registered design can be filed by anyone with appropriate grounds.
  3. Except in the case of priority, the date of registration is the actual date of filing the application. In the case of filing registration of design with priority, the date of registration is the date of application in the convention country.

What happens when somebody else copies the registered design?

  1. Use or application or import of the design of any registered design or its imitation, without authorised consent constitutes infringement.
  2. A penalty is imposed for each contravention. However, the registered proprietor can also file a suit for recovery of damages and for injunction.

Why is registering a design important?

  1. In the development of the aesthetics of design, you have invested money, time, manpower and art. It is important to protect your investments so that the fair returns are ensured to tap the market, which is possible only by way of registering the design.
  2. Design is one of the categories for registration of Intellectual Property Rights, which also include Patents, Trademarks, Geographical Indications and Copyrights.
  3. The Design application covers a wide variety of articles of industry and handicraft: A. from luxury items like jewellery to industrial and medical equipment; B. from furniture and appliances to textiles and pet accessories.

In short, any addition or creation of aesthetic value applied to a product is covered under The Designs Act, 2000 which is judged by the eye only.

Subscribe to our Newsletter

Discover the latest collections, news, and exclusive launches from us.