Inter play of trademark, design and copyright in shape of a product

SHAPE OF PRODUCT, PROTECTED UNDER THE DESIGN ACT

The Design Act in India protects only those Design, which are solely appealed by eye or in other word, the Design which are aesthetic in Nature are protectable in India.

Earlier the Design Law in India was governed by Design Act 1911. There has been considerable growth in the area of science and technology since the enactment of the Design Act, 1911. It was also felt that a better legal system is required to ensure effective protection of a registered Design. The enactment of new act was also necessary in order to bring the India Design Law at par with the International Law. The Design Act 1911 has been repealed and replaced by Design Act 2000. Presently the Law pertaining to Design in India is governed by Design Act 2000.

A Design is defined in Section 2 (d) of Design Act 2000, which is reproduced herein below.

"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 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.”

In other words the Design Act 2000 defines a Design as two-dimensional or three-dimensional features of shape, configuration, pattern, ornament, or composition of lines or colours applied to any article by any manual, chemical, or mechanical ( separate or combined) industrial process or means, , which in the finished article appeal to and are judged solely by the eye. The Design Act 2000 in India specifically excludes any mode or principle of construction or anything which is in substance a mere mechanical device. The Design Act in India also excludes any trade mark, property mark or any artistic work.

For the Design to be protected under the Design Law, it must be attractive to eye. All the shape, pattern, configuration of the product, which are having aesthetic value, are capable of being protected under the design Act.

THE RELEVANT CASE LAW

A DESIGN IN ORDER TO BE ORIGINAL, NEED NOT BE NEW OR ORIGINAL. THE NOVELTY IN APPLYING THE DESIGN TO THE PRODUCT IS SUFFICIENT.

AIR 2008 SC 2520 Bharat Glass Tube Limited Versus Gopal Glass Works Limited .

THE ONUS IS ON THE COMPLAINANT TO ESTABLISH THAT THE DESIGN IS NOT ORIGINAL.

AIR 2008 SC 2520 Bharat Glass Tube Limited Versus Gopal Glass Works Limited .

THE IMITATION AND COPYING HAS BEEN DEFINED. THE IMITATION NEED NOT BE REPLICA. THE COPYING HAS TO BE DECIDED BY EYE ALONE.

2014 (60) PTC 155 (Bomb) Whirlpool of India Limited Versus Videocon Industries Limited .

ONLY BECAUSE SIMILAR DESIGN IS REGISTERED IN ANOTHER COUNTRY-DOES NOT DEFEAT THE RIGHT OF THE REGISTERED PROPRIETOR IN INDIA.

2009 (39) PTC 104 (Del) (DB): Dabur India Versus Amit Jain

FUNCTIONAL DESIGNS ARE NOT PROTRCTED UNDER THE DESIGN ACT.

1999 (19) PTC 36 (Del), Escorts Construction Versus Action Construction.

FOR A DEFENCE OF FUNCTIONALITY TO SUCCEED, IT IS NOT ENOUGH TO SAY THAT THE FORM HAS SOME RELEVANCE TO THE FUNCTION. IF A PARTICULAR FUNCTION CAN BE ACHIEVED THROUGH A NUMBER OF DIFFERENT FORMS, THEN A DEFENCE OF FUNCTIONALITY MUST FAIL.

2014(60)PTC155(Bom): Whirlpool of India Ltd. Versus Videocon Industries Ltd.

THE SHAPE OF A PRODUCT, PROTECTED AS A TRADE MARK

The basic premise of law regarding the protection of trademark is evolved on the concept of association of particular name with a particular legal entity. By passage of time, the Trade Mark Law evolved to include inter-alia the shape of a product as a trademark. As per the provisions of Section 2 (zb) of the Trade Marks Act, 1999, even shape of a product has been included as a trademark.

Section 2(zb) of the Trade Marks Act 1999:

2(zb): 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;

However for a shape of product to function as a trademark, certain conditions are required to be fulfilled. Following conditions is sine qua non for the shape Trademark:

1. The shape of the product should be capable of being represented graphically.
2. It should capable of distinguishing the goods or services of one person from those of other.
3. The shape results from the nature of the goods themselves.
4. The Shape should not be functional in nature AND
5. It should not give substantial value to the goods.
6. Following are the various case laws, where shape of a product has been granted Trade Marks Protection.

IN A RECENT JUDGMENT DELIVERED BY HON'BLE HIGH COURT OF DELHI(FIVE JUDGE BENCH), REPORTED AS MANU/DE/4610/2018, CARLSBERG BREWERIES A/S. Versus SOM DISTILLERIES AND BREWERIES LTD. , THE HON'BLE HIGH COURT OF DELHI HAS RECOGNIZED THE PRINCIPLE THAT CAUSE OF ACTION FOR INFRINGEMENT OF DESIGN AND PASSING OFF CAN BE JOINED TOGETHER.

COPYRIGHT IN INDUSTRIAL DRAWING/DESIGN

Section 2 (c) of the Copyright Act 1957 provides the meaning of Artistic Work.

2. INTERPRETATION

In this Act unless the context otherwise requires –

(c) "artistic work" means -

(i) a painting a sculpture a drawing (including a diagram map, chart or plan) an engraving or a photograph whether or not any such work possesses artistic quality;
(ii) an architectural work of art; and
(iii) any other work of artistic craftsmanship;

From the definition clause of the Copyright Act, 1957, industrial drawing is artistic work as defined under the provisions of Section 2(c) (i) of the Copyright Act 1957.

Section 13 of the Copyright Act 1957, provides for different types of Copyright. The same are as under:

13. Works in which copyright subsists-

(1) Subject to the provisions of this section and the other provisions of this Act, copyright shall subsist throughout India in the following classes of works, that is to say-

a. original, literary, dramatic, musical and artistic works,
b. cinematograph films,

Section 14 of the Copyright Act, 1957 defines the statutory protection given to the copyright holder in different category of the Copyright. Section 14(e) specially defines the right in relation to artistic work, including drawing.

14. MEANING OF COPYRIGHT-

For the purposes of this Act, "copyright" means the exclusive right subject to the provisions of this Act, to do or authorize the doing of any of the following acts in respect of a work or any substantial part thereof, namely :-

d. in the case of an artistic work,-

e. to reproduce the work in any material form including depiction in three dimensions of a two dimensional work or in two dimensions of a three dimensional work,

Section 15 of the Copyright Act 1957, provides for the area, where copyright and Design Right are overlapping. Section 15 of the Copyright Act 1957, provides as under:-

15. Special provision regarding copyright in designs registered or capable of being registered under the Designs Act.

(1) Copyright shall not subsist under this Act in any design which is registered under the Designs Act.

(2) Copyright in any design, which is capable of being registered under the Designs Act, 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.

From the combined Readings of the afore-mentioned provisions of the Copyright Act 1957, following things emerges:

(i). Industrial Drawing is artistic Work within the meaning of Copyright Act.

(ii). By virtue of provisions of Section 14 of the Copyright Act 1957, the author of drawing have rights to reproduce the work in any material form including depiction in three dimensions of a two dimensional work or in two dimensions of a three dimensional work,

(iii). No Copyright shall not subsist under the Copyright Act 1957 in any design which is registered under the Designs Act.

(iv). Copyright in any design, which is capable of being registered under the Designs Act, 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 RELEVANT CASE LAWS

WHERE 3 DIMENSIONAL MODELS HAVE BEEN MADE FROM THE DRAWINGS AND ANOTHER PERSON HAS PREPARED THE DRAWINGS FROM THE 3 DIMENSIONAL MODEL AND THEN PREPARED THE 3 DIMENSIONAL OBJECTS THEN HE IS GUILTY OF INFRINGEMENT OF COPYRIGHT IN THE SAID DRAWING.

AIR 1987 Del 372 John Richard Brady Versus Chemical Process
1999 PTC (19) 36 (Del)- Escorts Construction Equipment Versus Action Construction.
1999 PTC (19) 369 DB- Action Construction Equipment Limited Versus Escorts Action.
1997 (17) PTC 178 (Del) (DB)- Classic Electronics Vs Puneet Industrial.
1997 (17) PTC 178 (Del) (DB)- Classic Electronics Vs Puneet Industrial.

In a recent Judgement Delivered by Hon'ble High Court of Delhi, reported as MANU/DE/6489/2017 titled as J.C. Bamford Excavators Limited and Ors Versus Bull Machines Pvt. Ltd. , the Hon'ble High Court of Delhi observed as under:

Merely because the parts of the Product have been manufactured by an industrial process more than fifty times would not necessarily lead to the conclusion that the copyright in the technical drawings of the said parts has ceased.