Design marking is a method used by proprietors to signal that their article is protected by design rights. It entails “marking” an article in a manner that informs the public at large that the article in question is the subject matter of a registered design. The issue of whether design marking is necessary or not has come up on occasion before Indian courts, who have tackled how such marking acts as an indicator of registration, and explained the rights that follow. This note discusses some of the questions around design marking in the context of the law and court decisions.
Marking under the Designs Act
Section 15(1)(b) of the Indian Designs Act, 2000 (“the Act) lists the rights of a proprietor to use a design mark. It states:
“Before delivery on sale of any articles to which a registered design has been applied, the proprietor shall… cause each such article to be marked with the prescribed mark, or with the prescribed words or figures denoting that the design is registered; and, if he fails to do so, the proprietor shall not be entitled to recover any penalty or damages in respect of any infringement of his copyright in the design unless he shows that he took all proper steps to ensure the marking of the article, or unless he shows that the infringement took place after the person guilty thereof knew or had received notice of the existence of the copyright in the design.”
This clause establishes that the proprietor of a registered design has the right to “mark” the design in a manner to denote that the design is registered.
The clause also states what happens if such marking is NOT clearly present. It provides that if such marking is not present on a registered design, the proprietor may not be allowed to recover any penalty or damages if there is any infringement of the design. Further, the proprietor may have to additionally prove having taken steps to ensure the marking of the article, or that the infringement took place after the alleged infringer knew or received notice of the design registration.
This provision continues substantively unchanged from its predecessor provision contained in Section 48(1)(b) of the Designs Act, 1911 (“the 1911 Act”), that was repealed by the current Act.
Is design marking mandatory?
A plain reading of Section 15(1)(b) of the Act suggests that design marking is an essential prerequisite if a proprietor wishes to enforce rights pertaining to the infringement of a registered design.
In Herbertsons Ltd. v. Crag Martin Distillery Private Limited (CS No. 2/2003, 14 October 2016), the High Court of Bombay at Goa provides some clarification on whether it is mandatory to “mark” designs. In this case, Herbertsons Ltd. had registered a design for their “bottle” under the 1911 Act, and sued Crag Martin Distillery for copying this design. In August 2001, Herbertsons claimed to have come across a brandy sold by Crag Martin in a bottle with a design identical to its own registered design. An infringement suit was filed in October 2001. The court observed that Herbertsons’ design registration was granted in August 2000, but it started marking its bottles only at the end of 2001. This delay in marking, till at least the end of 2001, amounted to a non-compliance of Section 15(1)(b), and consequently, the court held that Herbertsons was not entitled to claim any penalty or damages in respect of the alleged infringement.
Critically, Herbertsons also failed to establish that the infringement took place after the guilty party knew of the existing copyright in the design. The court observed that, to the contrary, immediately after Herbertsons sent a notice, Crag Martin sought details of the registration and on receipt of the same, started marketing their brandy in bottles of a different shape. This weakened Herbertson’s infringement allegations further, leading the court to eventually rule that the company had failed to successfully make out a case for compensation.
Key features of design markings
The manner and features of a design mark are also important to the act of design marking. Rule 26 of the Designs Rules, 2001 provides that to mark the article, any of the following words can be stated or embossed on the article, REGISTERED, REGD., RD, and the registration number. However, it is not necessary to mark the articles in textile goods where the design is printed or woven, other than handkerchiefs; and articles made of charcoal dust, which are brittle and not sold in a single piece.
In The Pilot Pen Co. (India) Pvt Ltd v. The Gujarat Industries Pvt Ltd (AIR 1967 Mad 215), the Madras High Court said that when there is a little scope to mark the article, the plaintiff-company should have shown that it had taken all proper steps to make known the registration, and that the several defendants had notice of the existence of the copyright in the design. A failure to do so was a “drawback”, according to the court, and it would be difficult to sustain the infringement action or grant relief.
Good practices in marking designs
The issue of design marking has not really come up before courts in India, other than in occasional cases, as discussed in this note, and thus the jurisprudence on this issue remains relatively underdeveloped. Notwithstanding the absence of detailed judicial clarification, it is generally advisable to mark articles appropriately to indicate that the article is subject to design protection.
It is also advisable that in situations where it may not be possible to mark the article itself, e.g., due to size constraints, etc., the proprietor should take alternate steps, such as marking the product packaging, to ensure that the public is aware of the design registration.
Traditional marking methods include embossing the article with relevant words/ registration number, e.g., by stamping, engraving, labelling etc. Although traditional marking has been a common practice for years, with changing times, virtual marking is also slowly gaining popularity. Virtual marking of the product entails providing a link to a relevant webpage on the product. It offers many advantages, especially the fact that updating details on a webpage is a much simpler and efficient process than updating physical markings on the products themselves.
Clearly, any failure to comply with the requirements of Section 15(1)(b) of the Act can become a costly oversight for the proprietor. Both the law and judicial precedents clarify that marking the article with registration information is necessary if the proprietor of a registered design seeks damages against an infringing party. Thus, design marking is both advantageous and recommended for any proprietor as, besides entitling the proprietor to collect damages in the event of infringement, it gives a constructive notice to the public of the registration of the design. This proactive marking and signalling also protects against any accidental infringement by competitors, or even by “innocent infringers” who may otherwise claim to have no knowledge of registration.