The interplay between copyright protection under the Copyright Act, 1957 ("Copyright Act") and design registration under Designs Act, 2000 ("Designs Act") has remained a persistent issue of judicial interpretation in India. Recently, the Hon'ble Supreme Court of India ("SC") in a landmark judgment, Cryogas Equipment Private Limited v. Inox India Limited and Others ("Cryogas Judgement"),1 shed some much-needed clarity on this longstanding debate.
Introduction – what sparked the debate?
The genesis of the dispute dates back to 2018 when Inox India Limited ("Inox") initiated a lawsuit against Cryogas Equipment Private Limited ("Cryogas") and LNG Express India Private Limited ("LNG Express"). Inox alleged that Cryogas and LNG infringed (i) the drawings of LNG Semi-trailers developed by Inox ("Proprietary Engineering Drawings"); and (ii) the details, processes, descriptions and narrations written by Inox employees in creating the Proprietary Engineering Drawings ("Literary Works"). Inox asserted ownership of copyright over these Proprietary Engineering Drawings as original 'artistic works' and the accompanying descriptions as 'literary works', highlighting undermining of substantial investment in their research and development.
In response, Cryogas and LNG Express sought rejection of Inox's plaint, contended that Inox's Proprietary Engineering Drawings fell within the definition of a 'design' under Section 2(d) of the Designs Act. They further argued that the industrial application of their Proprietary Engineering Drawings had exceeded the fifty (50) reproduction threshold, thereby relinquishing any copyright protection under Section 15 of the Copyright Act. Inox, on the other hand, maintained that their drawings were primarily functional and mechanical, lacking the requisite aesthetic appeal mandated by the Designs Act. They also argued that the literary works were separately protectable and that the question of whether the drawings were 'capable of being registered' as a design was a question of law and fact, requiring a full trial.
Tests Applied by Courts: Originality, Functionality, and Intent
It is important to note that Section 2(d) of the Designs Act explicitly excludes 'artistic works' as defined under Section 2(c) of the Copyright Act from protection under the Designs Act. However, upon reviewing the definitions of 'design' and 'copyright' in their respective legislation, it becomes clear that both forms of intellectual property share certain mutual elements and commonalities (for instances, painting / drawings having industrial application). This overlap has, thus, led to some blurring of the lines between the two, making it challenging to draw a clear distinction in certain cases.
Before the Cryogas Judgment, the interpretation between Section 15 of the Copyright Act and the Designs Act was discussed in a catena of judgments. In the case of Microfibres Inc v. Girdhar, 2 the plaintiff claimed exclusive rights to the drawings applied on the fabric, stating that they had sought copyright registration for the same. The Hon'ble Delhi High Court noted that the configuration was not an 'artistic work' and was intended to be put to industrial use, with no utility or independent existence of itself. Additionally, the High Court also emphasized that, in adjudicating such claims, due regard must be given to the legislative intent behind the respective statutes. The Delhi High Court held that the objective of the Designs Act was to protect the interests of the creator by granting them a limited period of exclusive rights for commercial exploitation. On the other hand, the Copyright Act provides protection for the lifetime of the author plus sixty years, thereby, offering an extended period of exclusive protection.
Building on this foundation, the concept of functional utility has been the secondary aspect in evaluating the practical purpose of a design. This means that if a product's design is mainly for a practical purpose, like the shape of a tool or how its parts work together, it would not fall within the ambit of Section 2(d) of the Design Act to qualify as a design for design protection. The said concept was first addressed by the House of Lords in Amp v. Utilux3 and in Smithkline Beecham Plc. v. Hindustan Lever Ltd4 by the Hon'ble Delhi High Court. In its reasoning, the High Court interpreted that where the primary purpose is functional, albeit offering some aesthetic appeal to consumers, a design is not capable of protection under the Design Act. The rationale behind the concept is that functional designs are meant to serve a utilitarian purpose. Resultantly, granting them protection would prevent competitors from using basic functional features, which could potentially stifle innovation and competition.
The Two – Pronged Compass: SC's Litmus Test
In order to afford some clarity and barometer to this issue, a 'two-pronged test' was set out by the SC, namely:
- The courts must ascertain whether the work in question is purely an 'artistic work' entitled to protection under the Copyright Act, or whether it is a 'design' derived from such an original artistic work and subjected to an industrial process as contemplated under Section 15(2) of the Copyright Act. This may involve examining the nature of the drawings and the intention behind their creation.
- If the work is found not to qualify for copyright protection under the first prong, the courts must then apply the test of 'functional utility' to determine its dominant purpose. This step aims to ascertain whether the primary purpose of the design is aesthetic (potentially qualifying for design protection) or purely functional, which might exclude it from design protection as well.
While cases such as Mohan Lal v. Sona Paint and Hardwares, 5 Whirlpool of India Ltd. v. Videocon Industries Ltd., 6 and Photoquip India Ltd. v. Delhi Photo Store,7 continued to refine these interpretations after the Microfibres Case, the lack of a consistently applied and definite framework meant that the outcome of disputes at this intersection could be less predictable. In view of the above and the arguments put forth by the parties, the Hon'ble Supreme Court aptly acknowledged and bridged this gap.
Conclusion
For years, the lack of a clear and structured test created a degree of unpredictability for creators and businesses. In line with legislative intent and aimed at fostering innovation, the proposed test offers a much-needed roadmap for courts and practitioners navigating such disputes. Further, in doing so, it also reaffirms that the Copyright Act and the Designs Act have a harmonious relation and thereby complementing each other. While Copyright is aimed at protecting original literary, artistic, and creative expressions, Designs safeguard the visual and aesthetic elements of products industrial application. Businesses must now be more strategic in their approach to IP protection. If a work is intended for industrial use and reproduced on a large scale, it should be registered under the Designs Act, not just copyrighted. Understanding the distinction between these two forms of protection is key to safeguarding commercial interests and ensuring long-term exclusivity.
Footnotes
1. 2025 SCC OnLine SC 780
2. 2006 SCC OnLine Del 60.
3. [1971] UKHL J1027-3
4. 1999 SCC OnLine Del 965.
5. 2013 SCC OnLine Del 1980.
6. 2014 SCC OnLine Bom 565.
7. 2014 SCC OnLine Bom 1088.
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