How to choose the best way to protect a design in India

By Manoj K Singh, Singh & Associates, Advocates & Solicitors
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The design of an article can be registered as a design, a trademark or a copyright. Three laws provide protection, each from a different perspective. Design owners need to understand this to maximize their protection from the commercial point of view.

Manoj Singh
Manoj Singh

Designs Act, 2000: As per section 2(d), “design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article, whether two or three dimensional or both, 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.

The term “design” does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trademark as defined in section 2(1)(v) of the Trade and Merchandise Marks Act, 1958, or any property mark as defined in section 479 of the Indian Penal Code, 1860, or any artistic work as defined in section 2(c) of the Copyright Act, 1957.

Trade Marks Act, 1999: As per section 9(3), a mark cannot be registered as a trademark if it consists exclusively of: (a) the shape of goods which results from the nature of the goods themselves; or (b) the shape of goods which is necessary to obtain a technical result; or (c) the shape which gives substantial value to the goods. A shape that does not fall into these categories can be registered as a trademark.

Copyright Act, 1957: Section 13 provides protection for the following classes of works: (a) original literary, dramatic, musical and artistic works; (b) cinematographic films; and (c) recordings. A design which is artistic in nature can get copyright protection.

Preventing misuse

The sections mentioned above show that designs are protected under the different intellectual property laws in India. The laws and the judiciary also ensure that the protection provided is not misused.

Under section 15 of the Copyright Act, as amended by the Copyright (Amendment) Act, 2012: “(1) Copyright shall not subsist under this Act in any design which is registered under the Designs Act, 2000. (2) Copyright in any design, which is capable of being registered under the Designs Act, 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 licence, by any other person.”

Design owners have to be careful in applying for copyright protection as under section 15 the protection will cease once the article is produced more than 50 times.

Further, the Designs Act provides that anything which is defined as a trademark under the Trade Marks Act or any artistic work under the Copyright Act will not be considered a design under the Designs Act.

Important case

In Samsonite Corporation v Vijay Sales (1998), Delhi High Court dealt with the subject of confusion regarding the subject matter of design and copyright. The court addressed the effect of the absence of a specific meaning for work design, for the purposes of the Copyright Act. It held that since “design” was defined in the Designs Act the provisions had to be read together to decide the question.

The case dealt with the effect of non-registration of the design under section 15 of the Copyright Act. It was found that the design clearly fell within the definition in the Designs Act, and within the meaning of the Copyright Act, so the plaintiff could not claim copyright protection with reference to the drawings.

In relation to users of an international design, it was ruled that that the article concealed in the design should be suited to production in quantity. An article which would normally be unique or only capable of being produced singly, such as an artistic creation or architectural work, would be excluded. The court also held that the purpose and the intention of drawings would be relevant to determine whether drawings could be a design within the meaning of the Designs Act and the Copyright Act.

Conclusion

Each form of design protection has pros and cons and applicants need to understand which will best suit their requirements. For example, copyright is best if the sole motive is to protect a design’s uniqueness. If the intention is to maximize commercial value by producing and selling the same design, protection under the Designs Act would be best. Finally, if the design has a distinctive shape that can identify the applicant’s goods the design should be registered under the Trade Marks Act.

Manoj K Singh is the founding partner of Singh & Associates, a full-service international law firm with headquarters in New Delhi.

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