An overlap issue is one where the holder of the Intellectual Property Right tries to assert his right under more than one concept. Softwares are protected under both copyright laws and patent laws. Similarly, industrial design patents that could be protected under the Designs Act, in specific cases, garner protection under copyright and trademark as well.
When issues arise due to overlapping of various types of Intellectual Property Rights the courts have majorly followed two approaches.
Either the courts should let the parties enforce such rights and benefit from such overlap or it should limit the scope by forcing them to demand protection under just one of the doctrines.
The benefit of the latter option results in clear demarcation and better implementation of the rights as the scope and limitation of every right is different.
Overlap in many cases is unavoidable therefore a need arises to maintain a harmonious coexistence between these rights.
To understand the cause of the overlap and its scope, let’s start with a general understanding of the terms copyright, trademark and design as per Indian laws.
It is a bundle of rights vested in the author/owner or a creator of the copyright under Section 14 of the Indian Copyrights Act, 1957. Copyright protection is granted to creators of original works. Work includes literary works, dramatic, musical, artistic, cinematographic films and sound recordings. Right to adaptation, reproduction, publication, translation, communication to the public are some examples of the rights vested.
The ‘expression of the idea’ is protected rather than the idea itself. Computer programmes (including computer databases expressed in words, codes, schemes or any other forms), tables and compilations are put under literary works. Owners of work are only entitled to exercise these rights.
As the world globalised, trade names, brand names, marks etc garnered immense value and therefore required some minimum protection. The TRIPS agreement came up with efficient procedures to ensure the same and thus the old Indian Trade and Merchandise Act, 1958 was amended in the year 1999 and the Trademarks Act was enacted as a result.
The Act encompasses many provisions such as filing of multi-class applications, service marks registrations, increasing the term of registration etc.
The Indian judiciary has also worked proactively in protecting trademarks by extending the protection to domain names as demonstrated in cases such as Tats Sons and Manu Kosuri &Ors and Yahoo Inc. vs Akash Arora. In these cases, the domain names were given the status of corporate assets rather than being treated like just another internet address and therefore are entitled to be protected just like a registered trademark.
A trademark is registered for 20 years and renewal is necessary within 6 months. Section 135 of the Trademark Act, 1999 deals with infringement and passing off of trademarks.
As defined under Section 2(d) of The Designs Act, 2000 a design majorly comprises of aesthetics of any article or product of manufacture and includes features of:
These are applied to any article which can either be two or three dimensional or in both of these forms. The article should be produced by an industrial process or other means (mechanical, manual, chemical). It can be a combination of these processes or the result of an individual one. The finished product should be appealed and judged only by the eye.
The provision excludes any mode of construction by a merely mechanical device. It also excludes a trademark defined under Section 2(1)(v) of the Trade and Merchandise Marks Act, 1958, property mark defined u/s 479 of the Indian Penal Code, 1860 and any artistic work defined u/s 2(c) of the Copyright Act, 1957.
Section 5 of the Design Act states that the person claiming to be the proprietor of an industrial design can apply for registration and it generally lasts for 10 years (can further be renewed for 5 years after paying the renewal fees).
The dual protection or the issue of overlap between the design and copyright has been addressed in Section 15 of the Copyright Act. The section lays down that copyright is not going to subsist in a design that has been registered under the Designs Act, 2000. Therefore when a design is registered under the Designs Act, the person has to forego his rights under the Copyright Act.
The contention arises where if the design is not registered under the Designs Act, and the article is reproduced more than 50 times by any industrial process, then the copyright of the owner in the article’s design ceases.
Let us discuss the conundrum this provision poses with the help of analysing a very famous ruling by the Delhi High Court. In Microfibres Inc vs Girdhar & Co & Anr, it was held that if there is an artistic painting and the design created out of it is not registered and reproduced 50 times, only the copyright of the design will be waived and the copyright in the original work i.e. the painting would continue to subsist. The intention of the legislature was inferred as giving more importance to the original work of the author and fewer merits to an industrially produced design. The fact that the Copyright Act doesn’t exclusively recognise any copyright that is applied to an article’s design gives birth to an issue i.e. faulty application.
In a subsequent case of Ritika Private Limited vs Biba Apparels Private Ltd, this ruling was applied straightforwardly. Ritu, the plaintiff, did not register her sketches or drawings under the Designs Act and the reproduction exceeded 50 times. She was denied any protection against infringement by the defendants both under the Copyright Act and Designs Act.
Whereas in the case of Rajesh Masrani vs Tahiliani Design Pvt Ltd, just because the copies hadn’t crossed the required number i.e. 50, the plaintiff was granted protection against the infringing activity. These examples bring about the dilemma these provisions create. The issue of copyright has to be decided as an artistic piece comes into existence.
Copyright has always been treated as an inherent right of the artist as no mandatory registration is required whereas under the Designs Act a design needs to be compulsorily registered for acquiring protection under the Act. This principle has been followed since a long time is violated by the present objective application of the court’s approach.
The issue of deciding the ‘intention of the creator’ was brought to the forefront when in 2017, in the case of Holland Company LP vs S.P. Industries where the plaintiff was denied copyright in the industrial drawings of an automated twisted lock based on making them being registrable under the Designs Act.
These case laws indicate that the courts emphasise upon the subject matter being put to industrial use for deciding the dilemma of copyright or design. Where it is put to commercialisation, the copyright ceases.
This interpretation has also been adopted because any other interpretation would only render the meaning of subject matter under the Design Act as completely ineffective and useless. However, this doesn’t set a good precedent as this interpretation is leading to erosion of rights.
It is the work of the legislature to come up with clearer laws and not that of the judiciary to navigate its way through vague and conflicting provisions, therefore these issues should be addressed and the overlap should be resolved in a much effective and just manner.
Shapes can be used both as a trademark (if used for trade) and as a design (if it fulfils the criteria). Therefore, an overlap between design and trademark does exist. The question or the conundrum always appears when it comes to claiming protection from infringement.
In Whirlpool India vs Videocon Industries Pvt Ltd, the ‘test for design infringement’ was established. It was held that for a suit to be successfully be decided in the favour of the plaintiff in case of design infringement it needs to be decided by the eye alone. It means that the distinctive or the essential feature of the design should have been infringed or copied and this similarity has to be judged by the eye alone.
Question:Whether a shape that has been registered as a design under the Designs Act, 2000 gets started being used for trade as a trademark would lose its protection under the Designs Act, 2000? This has been answered both in affirmative and negative terms in the precedents set by the Indian judiciary.
In Affirmation:In Dart Industries Inc and Ors vs Techno Plast & Ors, amongst other things, it was held that the action of passing off is a common law right, independent of Designs Act, but it wasn’t pleaded in this case that the public associated the design with the company. The same was held in Smithkline vs Hindustan Lever that passing off is a right based on the common law structure and despite the remedies for the infringement being provided in Section 22 of the Design Act, 2000, it will be available to a person. In Micolube India Ltd. v. Rakesh Kumar trading as Saurabh Industries & Ors. a suit for passing off was allowed to be instituted by applying the same reasoning as that of common law origin. Further clarification was provided by stating that it is not necessary to find a provision specified in a statute for an institution of a suit unless it has been specifically prohibited or excluded from the jurisdiction of the civil court in a clear language. However, it was held that a composite suit for passing off and infringement cannot lie as the cause of action behind the infringement and passing off be different.
A suit against infringement of design is brought when the uniqueness or originality of the design is violated by an act of the infringer whereas a trademark infringement occurs when the infringer tries to benefit or make a profit from the goodwill and an established presence of the business.
In Negative:The Delhi High Court in Tobu Enterprises v. Megha Enterprises, held that the Design Act provides remedies for infringement and no specified remedy against the action of passing off, therefore, no injunction can be granted on the ground of passing off.
Such diverging opinions of the issue can only lead towards one derivation that this question remains that if any shape is an unregistered trademark (registration would result in exclusion from being registered as a design u/s 2(d) of the Design Act, 2000) and it begins functioning as a trademark, then to what extent should the protection be bestowed.
Trademark and Copyright laws serve two different purposes in India. Copyright is for protecting the rights of authorship whereas trademark is to protect distinctive signs related to trade. Still, an overlap occurs between copyright and trademark.
In general, the conflict arises in the areas of logos, artistic signs, emblems, short sentences, use of fictional characters as commercial signs etc. Wherever such overlap occurs the people try to get a cumulative benefit under both the Copyright and the Trademark Act.
They treat both these laws as complementary and therefore try to gain benefit by exploiting both or by applying them on items of an article. For example, a painter would enjoy copyright protection over his painting but if the same painting is used as a logo for trade, then it would also garner the benefit of the trademark. The picture’s trademark won’t affect the copyright status.
In India, logos qualify as artistic works for copyright protection.
With innovation, each day, the overlaps and therefore conundrums increase when it comes to deciding the cases related to Intellectual Property Rights. It is the need of the hour that the legislature comes with better laws that govern the issues related to overlapping strictly and unambiguously.
What exists right now are just approaches and views adopted by the courts of the country to deal with the overlapping. It is not the job of the judiciary to navigate their way through ambiguous laws. It is imperative that the legislature takes cognizance of the issues and fixes them.
