India: Navigating The Trademark And Design Overlap In India

In today's globalized economy, Intellectual property (IP) emerges as the cornerstone of innovation and serves as the bedrock for business owners to enjoy exclusive rights to the ownership as well as the economic benefits arising out of their unique creations. There are several types of intellectual property inter alia design, copyright, trademark, geographical indications, patents and trade secrets, etc. For the purpose of this article, focus will be placed on Trademarks and Designs.

With the wide scope of IP protection offered in India, there arise several overlaps that exists in the present Intellectual Property Right regime. The issue of overlapping arises when the innovator who tries to hold IP rights in multiple regimes and/ or tries to assert his/ her rights under more than one regime. Such disputes include overlap between copyright and design (in respect of artworks such as Images or 3D or 2D renderings having an artistic quality which are also capable of being registered under the Designs Act), with respect to Trade Marks and Copyright (in respect of artistic work which is to be used in or in relation to goods or services which can be granted protection under both regimes), Trademarks and Geographical Indication etc.

One such overlap also exists between Trade Marks and Design which arises in regards to shape of goods/ articles. Trademarks protect brand identities, while designs safeguard the unique visual aspects of products. However, there exists an intriguing overlap between these two forms of protection leading to potential legal challenges, inefficiencies, uncertainties, opportunities and untapped benefits. In this article, we will delve into the complexities of the intersection between trademarks and designs domains in India, highlighting the consequent issues at hand and proposing requisite solutions.

Analysing Meaning and Definition

Trademarks act as a source identifier which helps in distinguishing the goods and services of one person from that of another¹. Whereas a design consists of the shape, configuration, pattern, or ornament applied to an article by an industrial process that enhances its aesthetic appeal². While the definition of trademarks mention under the statute1 expressly includes shape of goods as a registrable form of trademark, on the contrary, from a bare perusal of the definition of design provided under section 2(d) of the Designs Act, 2000, it becomes evidently clear that the scope of design expressly excludes trademarks from the purview of being registrable under designs.

The two thigs might prima facie seem to be similar, however, major differences between shape of goods as a trademark and design exist, which have been enumerated in the tabular representation below:

EXPLORING THE OVERLAP

Rights Enforcement Mechanism

The basic requirements of registration of a design mark bars prior publication of a design and demands its novelty, thus, the statute allows no scope for grant of any common law rights to institute proceedings for passing off with respect to a design mark and in case of encroachment of rights, the innovator only has the legal recourse of infringement, which is a statutory right provided under section 22 of the Design Act, 2000. On the other hand, a trademark registration does not necessitate any such requirement for novelty. In case of dispute, while a registered trademark owner has the right to institute suit for infringement under Section 29 of the Trade Marks Act, 1999, the prior user of a Trade Mark also has common law rights granted under Section 27 of the Trade Marks Act, 1999, to action for passing off.

Now, the question of whether or not passing off action can co-exist with Design Registration has been answered by courts in different cases.

It is imperative to review the case of Tobu Enterprises v Meghna Enterprises³, wherein court noted that when the design of both the parties are registered, no action in the nature of issue of injunction or recovery of damages was found permissible. The plaintiff's contention that earlier registration must prevail against the latter registration, it was held that no doubt section 47 creates a substantive rights in favour of a person whose design is registered but that section does not say that registration earlier in time will prevail against a latter registration and as such if each of the parties have registration of design, each of them can use that design for its products. There court thereafter held that "As regards the right against passing off that is a common law right subject to the provisions of a particular statute. Section 53 of the Act deals with the remedy of injunction, claim of damages and rendition of account, no injunction can be issued on the ground of passing off. Moreover the plaintiff produced the latest model of tricycle which is different from the design which was got registered and thus the plaintiff having not come with clean hands is not entitled to the relief of injunction and accordingly the injunction already granted is vacated and the application is hereby dismissed."

The subsequent case of Micolube India Limited v. Rakesh Kumar Trading as Saurabh Industries & Others⁴, the court went on to further elaborate the legal stance taken in the case of Tobu Enterprises v Meghna Enterprises by step-wise answering the issues at hand and also provides the different permutations and combinations which can be chosen to bring up a suit for infringement and passing off with respect to design.

"134. I shall now sum up my answers to the questions under the reference in the following manner:

a) A suit by the registered proprietor of Design for infringement of the registered design is not maintainable against another registered proprietor under the Designs Act, 2000 in so far as the registration covers the same features of the shape and configuration of the same article under the Design.

b) The remedy of passing off in so far as it relates to claim of protection for shape of articles is not available for the purposes of enforcement of rights and remedies under the Design Act. The said remedy is clearly absent under the Designs Act considering the avowed objective of the Act of 2000 which is to provide limited protection with no unnecessary extension.

c) The remedy of passing off in so far as it relates to claim of protection for shape of articles cannot be joined with the suit for infringement of the registered Design. The said remedy of passing off is available in alternative to the statutory protection conferred by the Design Right. For the purposes of the same, the suitor has to elect between the two inconsistent rights and remedies having distinct objects and policies.

Additional legal points determined

a) Notwithstanding the above said conclusion in (b) and (c), the remedy of passing off would continue to be available along with the infringement of registered designs and can be joined with the same in order to prevent consumer confusion which may be caused by the use of trade mark, get up, trade dress or in any other manner excepting the shape of the goods which is or was forming the subject matter of the registration of the Design.

b) The remedy of the passing off in so far as the shape of the article is concerned shall also be available even during currency of the design monopoly or even after the expiry of same to the extent that the claim of the feature of the shape is not covered within the novelty claim under the Design monopoly rights and the said claim of the protection qualifies all the necessary ingredients of the Trade Mark.

c) A remedy of passing off in so far as the shape of the article is concerned shall not be available even after the expiry of the Design to the extent the said feature of the shape of the article is covered within the novelty claim as made under the Design Right as after expiration of the Design, the novel shape claimed under the Design Act goes in public domain. 135. The reference is disposed of."

Further, in the judicial pronouncement of Mohan Lal v. Sona Paint & Hardwares⁵, a slightly different stance was taken wherein it was held that

1. A holder of a registered design could institute a suit against a defendant who is also in possession of a registered design.
2. A holder of the registered design will be entitled to institute an action of passing off in respect of a design used by him as a trade mark provided the action contains the necessary ingredients to maintain such a proceeding.
3. A composite suit for infringement of a registered design and a passing off action would not lie.

Further, in the judicial pronouncement of Crocs Inc. USA v Aqualite India & Ors⁶, the court furthered the legal stance taken in the aforementioned cases and held that while a design alone cannot serve as a trademark, the possibility of pursuing a passing off claim in a trade dress still remains viable if there is an element of "something extra" or an additional component beyond a registered design. For Example: Consider a scenario where an individual holds a registered design for a specific pattern on the exterior of a handbag. In such a case, they could potentially seek relief through a passing off claim in connection with the overall trade dress of the handbag, excluding the specific pattern. This claim, when based on the handbag's trade dress rather than the design protection alone, might be permissible.

Inference Drawn

• After a comprehensive analysis of the aforementioned case laws, it can be concluded that there is ambiguity regarding whether a suit for the infringement of a registered design is maintainable against another registered proprietor of a design under the Design Act, 2000. In some cases, the court has allowed such a suit for infringement by a registered design holder against another registered design holder. However, in other cases, the court has taken a dissenting opinion and decided not to entertain such suits of infringement. This seems like an ambiguity which will eventually be clarified as more litigation comes to life.

• Regarding the question of whether the remedy of passing off is available in the absence of express saving or preservation of common law by the Designs Act, 2000, it can be ascertained that the remedy for passing off the shape of goods is not available under the Design Act, 2000.

• When reviewing the question of whether the concept of passing off available under the Trade Marks Act can be combined with the action under the Designs Act when they are mutually inconsistent with the remedy under the Designs Act, 2000, it is clear from several case laws that a passing-off action with respect to aspects other than the shape of goods in a trademark may be raised. However, such a remedy of passing off cannot be pursued when it comes to the shape of goods feature of the trademark. A suit for infringement of the shape of goods under the Design Act cannot be joined with a suit for passing off the shape of goods under the Trade Marks Act. For this, the innovator has to choose between the two available remedies. Having said that, a suit for infringement of the shape of goods under the Design Act can be combined with a suit for passing off all the other features of the trademark, including trade dress, word mark, getup, etc., except for the shape of goods.

Legislative Solutions

The legislation should provide clearer guidelines on when an aesthetic feature can be protected as a trademark and when it should be protected solely as a design. This would reduce ambiguity and legal disputes. Streamlining the registration procedures for trademarks and designs could simplify the process for IP owners. Establishing mechanisms for coordination between the Trademarks Registry and the Design Registry could improve communication and reduce potential conflicts. This might involve exchanging information on overlapping applications or collaborative efforts to resolve disputes.

On-ground Solutions:

Educating business owners regarding the various IP protections offered in the country along with their pros and cons would further lead to an informed decision by the business owners. Apart from this, certain suggestions with respect of the protection of the design/shape of goods are to be kept in mind namely

1. Before initiating the process, ensure that your design has not been publicly disclosed.
2. Begin by seeking design registration for your creation.
3. Following the design registration, apply for trademark registration specifically for the shape of your goods.
4. Subsequently, pursue a trademark registration for distinctive features apart from the shape of goods. For Example: the colour, brand name, trade dress etc.
5. It is strongly advised against obtaining a copyright registration for any design intended for reproduction over 50 times via an industrial process. This is due to the fact that the protection granted by copyright will cease to apply once the design is reproduced more than 50 times through an industrial process, as stipulated by Section 15 of the Copyright Act, 1957.
6. In the event of a dispute, consult with a legal expert and elect the relevant statute 'Trade Marks Act, 1999 or the Design Act, 2000' under which you wish to enforce your rights.

Conclusion

Navigating the overlap between trademarks and designs in India is a difficult task which requires not just proactive measures and careful consideration but also legal acumen. Legislative changes can definitely provide clarity, however, it cannot be denied that informed IP protection strategies are equally essential. Courts play a vital part in clarifying the various ambiguities and doubts during litigation rounds. By making informed choices, consulting expert council, conducting IP searches, innovators can efficaciously manage their intellectual property rights while promoting innovation. Balancing these aspects is key to achieving a harmonious coexistence of trademarks and designs in India's dynamic business landscape.

Footnotes

1. Section 2(1)(zb) of the Trade Marks Act, 1999 "trade mark" means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colours;"

2. Section 2(d) of the Design Act, 2000 ""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, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are 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, 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 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957)."

3. Tobu Enterprises v Meghna Enterprises, (1983) PTC 359

4. Micolube India Limited v. Rakesh Kumar Trading as Saurabh Industries & Others, 2013 (55) PTC 1[Del][FB]

5. Mohan Lal v. Sona Paint & Hardwares, 2013 (55) PTC 61[Del][FB]

6. Crocs Inc. USA v Aqualite India & Ors, 2019 (78) PTC 100[Del]

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.