This article titled ‘The overlap between Copyright, Design and Trademark’ is written by Ayushi Sharma and discusses the overlap between the three in the domain of intellectual property. The overlap between Copyright, Design and Trademark Intellectual property rights are the rights given to a person to enjoy monetary benefits and get exclusive recognition for a unique creation of their… Read More »

This article titled ‘The overlap between Copyright, Design and Trademark’ is written by Ayushi Sharma and discusses the overlap between the three in the domain of intellectual property.

The overlap between Copyright, Design and Trademark

Intellectual property rights are the rights given to a person to enjoy monetary benefits and get exclusive recognition for a unique creation of their mind. The main objective of Intellectual Property rights is to establish a balanced system between the interests of an innovator and the general public. The types of intellectual property consisting of design, copyright, trademark, geographical indications, patents and trade secrets.

The issue of overlapping begins when an innovator who holds an Intellectual Property right tries to seek protection under more than one concept. Shapes and patterns are protected under the Designs Act 2000. The Trademark Act,1999 and the Copyright Act, 1957.

Although these Laws were drafted to fulfil different purposes, their practical applications show frequent overlaps, similarly, computer software has been given protection under the design act but in certain instances can acquire protection under trademark or copyright.

I. Copyright and design overlap

Section 15 of the Copyright Act,1957 provides clarification on the issue of design and copyright overlap. The section clarifies that copyright will not remain in force against a design that is registered under the Designs Act, which means if a design has been registered under the designs act, then the innovator has to let go of his rights provided in the Copyright Act. If an issue arises where the design has not been registered under the design act but the article in question is reproduced 50 times in an industrial process, then in that case also the copyright of the innovator comes to an end.

The applicability of this section was seen in the case of Ritika private limited v. Biba Apparels Private Ltd[1], where the plaintiff had not acquired registration for her sketches under the designs act and the same was reproduced more than 50 times, the court denied any protection for her sketches against the defendant under both design and copyright act.

Delhi high court in the case of Rajesh Masrani v. Tahliani[2] design addressed an issue raised due to overlapping between copyright and design protection where the plaintiff submitted that the drawings made for the purpose of developing garments are his artistic works protected under section 2(c)(i) of the Copyright Act and the defendant argued that garments or drawings cannot be considered as artistic works and should seek registration under Section 15(2) of the Copyright Act, the court granted protection to plaintiff merely because the copies were not reproduced 50 times.

The point of discussion here is that for a long time the copyright is treated as an inherent right of an artist but in order to seek protection under the designs act, one must get it registered but in recent times it is observed that the courts are applying an opposite objective approach towards such cases.

II. Trademark and design overlap

Similarly, overlaps between trademarks and designs are seen frequently in various cases. The overlap between design and trademark usually appears in respect of ‘shapes. The issue in such cases arises during the establishment of protection against infringement.

In the case of Whirlpool India v. Videocon Industries Pvt Ltd[3], the court tried to establish a test for infringement, the court stated that in cases of design infringement to provide protection to the plaintiff, the infringement has to be judged by the eye alone.

Delhi high court in a significant judgment of the famous Crocs case[4] held that a registered design cannot constitute a trademark.

Now the question arises that if a shape that has been registered under the Designs Act, is being used as a trademark for the purpose of trade, would it lose protection under the design act, the courts applied the principle of passing off and held that passing off is a right based on common Law (Smith Kline v. Hindustan Lever)[5]. Contrary to this Delhi High Court in the case of Tobu Enterprises v. Megha Enterprises [6]denied an injunction on basis of passing off.

Another important question arises here that can a suit of an infringement can be filed against a registered design under a designs act by another registered design under the design act. In the case of Mohan Lal [7], it was held that such a suit can be maintainable as the expression of “any person” under section 22 of the designs act does not exclude a registered design innovator.

III. Trademark and copyright overlap

Such overlaps are often seen in trademarks and copyrights too, such overlaps are generally seen on CDs, novels, websites etc. A photo on a novel can be used as a trademark, the printing of such a photo can amount to copyright. Such situations occur because they provide different protections under legislature. Such overlaps are usually seen on the same product. The logo of the product amounts to overlap frequently here, as if the logo is used for trade purposes can be used as a trademark but can also amount to copyright if it’s artistic enough.

IV. Conclusion

Such overlaps often arise due to duplications of protection given under the IP rights. On the occurrence of such overlaps, the court can either permit the parties to enjoy protection under two-act or more acts or can either restrict the parties to acquire protection only under one act, in the cases of infringement the court applies either the interpretation of the statues or in absence of legislation the court often uses its own conscience to pass the judgement.


References

  1. Aparajita Lath, Its all about the shape–design infringement and passing off, Available Here.
  2. Attars and Agarbattis: Protecting Traditional Cultural Expressions through Non-Conventional Trademarks by SpicyIP, Available Here.

Footnotes

[1] CS(OS) No.182/2011

[2] FAO (OS) No.393/2008

[3] 1-NMS 2269 OF 2012

[4] 903/2018 & IA 16586/2018

[5] (2002) ILLJ 453 Bom

[6] I.A. No. 1480 of 1983 in Suit No. 473 of 1983

[7] CS(OS) 384/2008


  1. Law Library: Notes and Study Material for LLB, LLM, Judiciary and Entrance Exams
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Updated On 2021-10-05T11:41:28+05:30
Ayushi Sharma

Ayushi Sharma

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