Marking Registered Designs: A Legal Necessity or Mere Formality?

Design marking is a method used by proprietors to indicate that their article is protected by design rights. It involves “marking” an article to inform the public that the article in question is the subject of a registered design. In this regard, Indian courts have also occasionally examined whether design marking is essential or not, highlighting its role as an indicator of registration and the rights it confers. This article explores key aspects of design marking under Indian law and judicial decisions.

Design Marking under the Indian Designs Act, 2000

Section 15(1)(b) of the Indian Designs Act, 2000 outlines the requirements for design marking. It states:

“(1) Before delivery on sale of any articles to which a registered design has been applied, the proprietor shall-

(a) (if exact representations or specimens were not finished on the application for registration) furnish to the Controller the prescribed number of exact representations or specimens of the design; and, if he fails to do so, the Controller may, after giving notice thereof to the proprietor, erase his name from the register and thereupon the copyright in the design shall cease; and

(b) 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.

(2) Where a representation is made to the Central Government by or on behalf of any trade or industry that in the interest of the trade or industry it is expedient to dispense with or modify as regards any class or description of articles any of the requirements of this section as to marking, the Central Government may, if it thinks fit, by rule under this Act, dispense with or modify such requirements as regards any such class or description of articles to such extent and subject to such conditions as it thinks fit.”

This provision establishes proprietor’s right and obligation to mark registered designs and outlines the consequences of failing to do so. Without appropriate marking, the proprietor may not be entitled to claim penalties or damages for infringement, unless they demonstrate efforts to ensure marking or prove that the infringement occurred with the infringer’s knowledge of the registration.

This clause mirrors its predecessor in Section 48(1)(b) of the Designs Act, 1911, which was repealed by the current Design Act, 2000.

Case Law and Judicial Precedents

A plain reading of Section 15(1)(b) suggests that design marking is a critical prerequisite for enforcing rights against design infringement. 

Herbertsons Ltd. v. Crag Martin Distillery Private Limited [1]1

Herbertsons Ltd. obtained a design registration for their bottle under the Designs Act, 1911. Following the enactment of the Designs Act, 2000, the registration was carried over as per Section 48(2), ensuring its validity under the new Act. Herbertsons later filed a suit against Crag Martin Distillery, alleging design infringement of their registered bottle design.

The Bombay High Court noted that although the design registration dated back to 2000, Herbertsons began marking its bottles with the required registration details only in late 2001. This delay violated Section 15(1)(b) of the Designs Act, 2000, which mandates timely marking for claiming damages. Consequently, the court ruled that Herbertsons was ineligible to recover damages due to non-compliance with this statutory requirement.

Moreover, the court observed that Crag Martin Distillery ceased using the alleged infringing design upon receiving notice and promptly switched to bottles with a different shape. The court found no evidence of prior knowledge of the registered design on the part of Crag Martin before the notice, further weakening Herbertsons’ infringement claims.

This case emphasizes the criticality of timely compliance with marking requirements for proprietors seeking enforcement and remedies under the Designs Act, 2000.

Trodat Gmbh & Anr vs Addprint India Enterprises Pvt Ltd. [2]2

In this case, the defendant filed an application under Order VII Rule 11 of the Code of Civil Procedure (CPC), seeking rejection of the plaint on the grounds that it was barred by Section 15(1)(b) of the Designs Act, 2000. The defendant relied on the Bombay High Court’s decision in Herbertsons [1] to argue that the plaintiff’s failure to mark the registered design on its products precluded claims for damages or penalties.

The Delhi High Court, however, held that the applicability of Section 15(1)(b) must be determined based on the facts stated in the plaint. Even if the plaintiff failed to mark the registered design on its articles, the proprietor could still claim damages if it could be shown that the infringement occurred after the infringer had knowledge or received notice of the registered design.

The court recognized the importance of design marking under Section 15(1)(b) but clarified that non-compliance does not automatically justify rejecting the plaint. Claims for other remedies, such as injunctions, remain unaffected and require factual determination through trial.

Accordingly, the Delhi High Court dismissed the application, emphasizing that the issues raised by the defendant could only be adjudicated upon after a proper examination of evidence.

Key Features of Design Markings

The method and content of marking are governed by Rule 26 of the Designs Rules, 2001, which specifies:

  1. Marking should include any of the words “REGISTERED,” “REGD.,” “RD,” or the registration number.
  2. Marking is not mandatory for certain articles, such as textile goods (except handkerchiefs) and brittle charcoal dust articles sold in pieces.

In The Pilot Pen Co. (India) Pvt Ltd v. The Gujarat Industries Pvt Ltd. [3] , the Madras High Court noted that where physical marking was impractical, the proprietor should demonstrate other efforts to notify the public of the design registration.

Best Practices in Design Marking

Although the jurisprudence on design marking in India is limited, it is advisable for proprietors to follow best practices to ensure compliance:

  • Mark Articles or Packaging: Where marking the article is impractical due to size or material constraints, marking the product packaging is a viable alternative.
  • Use Appropriate Marking Methods: Traditional methods such as embossing, stamping, engraving, or labeling are effective.
  • Explore Virtual Marking: Virtual marking, which involves linking the product to a webpage containing registration details, is gaining popularity. This approach simplifies updates and ensures accurate information.

Conclusion

Failure to comply with Section 15(1)(b) of the Designs Act, 2000 can result in significant consequences for proprietors. Indian law and case precedents emphasize that marking articles with registration information is essential for claiming damages against infringers.

Beyond enabling legal remedies, marking serves as a constructive notice to the public, reducing accidental infringements by competitors or “innocent infringers” who are unaware of the design registration. By adopting proactive marking strategies, proprietors can safeguard their rights, deter infringement, and ensure stronger enforcement of design protections.

References

  1. [1] CS No. 2/2003, 14 October 2016 ↩︎
  2. [2] CS(COMM) 737/2022[3] AIR 1967 MAD 215 ↩︎

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