India: IP Laws & The Criss-Cross Roads!!

Last Updated: 27 June 2013
Article by Srinjoy Banerjee

Recently, the Delhi High Court by way of the judgment in Kiran Shoes Manufacturers Vs. Registrar of Copyrights & Anr. [2013 (54) PTC 386 (Del.) (DB)], has once again reiterated that making over 50 copies of an artistic work by way of an industrial process, takes the said work out of the purview of Copyright protection.

Section 15 of the Copyright Act states that "...Copyright shall not subsist under this Act in any design which is registered under the Designs Act, 1911".

Copyright in any design, which is capable of being registered under the Designs Act, 1911 (2 of 1911) [Now the Designs Act, 2000 (16 of 2000)], but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright or, with his license, by any other person.

The Indian Designs Act also holds that the term Design, "does not include.... any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957".

This case and the above provisions of law raise a very interesting point for consideration.

The makers of the law being well versed with all aspects of Intellectual Property and realizing the importance of defining each law, gave clarity to each regime, be it Patents, Trademarks, Designs, or Copyright vis-ŕ-vis each other, as well as with the newer forms of Intellectual Property such as Geographical Indications, Plant Varieties, Biological Diversity, Semi-Conductor and Traditional Knowledge.

For instance when one reads the Trademark Laws with those governing Copyright, and one studies "artistic work capable of being registered as a Trademark," each law addresses the point of overlap.

The proviso to Section 45 of the Copyright Act, 1957, states that "in respect of an artistic work which is used or is capable of being used in relation to any goods and services, the application shall include a statement to that effect and shall be accompanied by a certificate from the Registrar of Trade Marks referred to in section 3 of the Trade Marks Act, 1999, to the effect that no trade mark identical with or deceptively similar to such artistic work has been registered under that Act in the name of, or that no application has been made under that Act for such registration by, any person other than the applicant".

Rule 24 (3) of the Trademarks Act, 1999 gives effect to the search to be conducted per Section 45 of the copyright law.

The intention is not so much as to prohibit, but rather to make sure that the proprietary of the two - the artistic work and the mark remained consistent so as to keep the Register of the Trademarks and Register of Copyrights pure.

Similarly between the laws of Design and Trademark the definition of Design specifically excludes a trademark.

"d) "design" means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms.... ......and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958....".

The similarity between the two laws lies in such products or articles which may become "Source Identifiers" bringing it in the scope of Trademark rather than Designs.

The Trademarks Act further defines mark to include 3D marks and shape of goods which again blurs the dividing line. Mark is defined as to ..."include a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof".

In terms of the Patent and Copyright laws, the overlap lies with respect to Software Patents. In India, software is not per se patentable. The Patent Office, as a generality, allows patents for software only if coupled with hardware. In such an event, to protect the Intellectual Property subsisting in software, Copyright in the literary aspect of the software's source/object code is a viable option. Copyright protection also has an advantage of giving the right owner a comparatively longer period of protection. 60 years from the death of the author versus 20 years in the case of Patents.

If one looks at Patents versus Designs, one of the key areas of similarity and difference is with the definition of whether an article is "solely dictated by function" - i.e. "the functional element". The definition of design makes it very clear that design can be obtained for any article which "...can be judged solely by the eye but does not include any mode or principle of construction or anything which is in substance a mere mechanical device". The ambit of Patents covers the above.

However, there is a grey area here. The Designs Act in its present form in India, exclude functional designs. The concept is debatable. In all articles in which design protection is sought, there would an element of functionality. The key question would be gauging the degree of that functionality and to interpret whether the article in question veers towards Patents or Designs. In some cases this functionality will in fact define the "shape and configuration" of the article under Designs law and hence Design protectable.

The reading of Section 3 of the Patents Act states 'What are not inventions'. The law makers in their wisdom specifically chose to separate certain other IPs from Patents at the very outset to give ample clarity to each law. Each of these exclusions are subject matters of a different Intellectual Property.

3 (j)

plants and animals in whole or any part thereof other than micro­ organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;

The Protection of Plant Varieties and Farmers Rights Act, 2001

3 (k)

a mathematical or business method or a computer programme per se or algorithms;

The Copyright Act, 1957

3 (l)

a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;

The Copyright Act, 1957

3 (o)

topography of integrated circuits;

The Semiconductor Integrated Circuits Layout-Design Act, 2000

3 (p)

an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components.

Traditional Knowledge

Similarly, comparing the law of Trademarks with the law of Patents, the former law is engineered to exclude from Trademark, any term, which has been under a Patent, but which has ceased to be a Patent, and has by general usage become known by the name i.e. "...said word is the only practicable name or description of the article or substance".

With the coming of Geographical Indications, the Trademarks Act has sought to invalidate the registration of any trademark conflicting with a Geographical Indication. A corresponding provision exists in the Geographical Indications Act, for prohibition of registration of geographical indication as trade mark. The only exception to this provision as factored in the Geographical Indications Act, is a situation where a trade mark contains or consists of a geographical indication but on the ground of good faith, the Registry allows the same.

Indeed, the above are just a few of the examples wherein the laws merge/overlap with each other and have to be separated by definition. With more and more new ideas and innovations emerging each day, there are possibilities of further definitions and interpretation as to the appropriateness of the applicability of a given law

Although, each of the IPs are distinct laws by themselves, the above conundrum of law is a heady mix of the various types of Intellectual Property, each defined and articulated by the law makers to stay within the boundaries set. However, the lines between them, very much like the boundaries of any state or country, blur at the border!!

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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Srinjoy Banerjee
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