Intellectual property rights are the rights given to a person to enjoy
monetary benefits and get exclusive recognition for a unique creation of their
mind. The main objective of IP rights is to establish a balanced system between
the interests of an innovator and general public. The types of intellectual
property consist of design, copyright, trademark, geographical indications,
patents and trade secrets.
The issue of overlapping begins when an innovator who holds an IP right tries to
seek protection under more than one concept. Shapes and patterns are protected
under Designs Act 2000. The Trademark Act ,1999 and the Copyright Act, 1957,
Although this Laws were drafted to fulfil different purposes, their practical
applications shows frequent overlaps, similarly computer software have been
given protection under the design act but in certain instances can acquire
protection under trademark or copyright.
Copyright and design overlap
Section 15 of the Copyright Act,1957 provides clarification on the issue of
design and copyright overlap. The section clarifies that copyright will not
remain in force against a design that is registered under the Designs Act, that
means if a design has been registered under the designs act, then the innovator
has to let go of his rights provided in Copyright Act. And if an issue arises
where the design has not been registered under the design act but the article in
question is reproduced 50 times in a industrial process, then in that case also
the copyright of the innovator comes to an end.
The applicability of this section was seen in the case of Ritika private
limited vs Biba Apparels Private Ltd
, where the plaintiff had not acquired
registration for her sketches under the designs act and the same were reproduced
more than 50 times, the court denied any protection for her sketches against the
defendant under both design and copyright act.
Delhi high court in the case of Rajesh Masrani v Tahliani
addressed an issue raised due to overlapping between copyright and design
protection wherethe plaintiff submitted that the drawings made for the purpose
of developing garments are his artistic works protected under section 2(c) (i)
of the Copyright Act and the defendant argued that garments or drawings cannot
be considered as artistic works and should seek registration under Section 15(2)
of the Copyright Act, the court granted protection to plaintiff merely because
the copies were not reproduced 50 times.
The point of discussion here is that since a long time the copyright are treated
as inherent right of an artist but in order to seek protection under designs
act, one must get it registered but in recent times it is observed that the
courts are applying an opposite objective approach towards such cases.
Trademark and design overlap
Similarly overlap between trademark and designs are seen frequently in various
cases. The overlap between design and trademark usually appears in respect of
'shapes. The issue in such cases arises during establishment of protection
In the case of Whirlpool India vs Videocon industries Pvt Ltd, the court tried
to establish a test for infringement, the court stated that in cases of design
infringement to provide protection to plaintiff the, the infringement has to be
judged by the eye alone. Elaborating on the same the court held that to
determine whether the unique and essential feature of a design is infringed or
copied ,the same has to be judged by eye alone.
Delhi high court in a significant judgment of the famous Crocs case held that a
registered design cannot constitute a trademark.
Now the question arises that if a shape that has been registered under Designs
Act, is being used as a trademark for the purpose of trade, would it lose
protection under the design act, the courts applied the principle of passing off
and held that passing off is a right based on common Law (Smith Kline v
Hindustan Lever). Contrary to this Delhi High Court in case of Tobu Enterprises
v. Megha Enterprises
denied injunction on basis of passing off.
Another important question arises here that can a suit of a infringement can be
filed against a registered design under a designs act by another registered
design under the design act. In case of Mohan Lal it was held that such suit can
be maintainable as the expression of any person
under section 22 of the
designs act does not exclude a registered design innovator.
Trademark and copyright overlap
Such overlaps are often seen in trademark and copyrights too, such overlaps are
generally seen on CDs, novels, websites etc. A photo on a novel can be used as
trademark, the printing of such photo can amount to copyright. Such situations
occurs because they provide different protections under legislature. Such
overlaps are usually seen on the same product. The logo of the product amounts
to overlap frequently here, as if the logo is used for trade purposes can be
used as trademark but can also amount to copyright if its artistic enough.
Such overlaps often arise due to duplications pf protection given under the IP
rights. under occurrence of such overlaps the court can either permit the
parties to enjoy protection under two act or more acts or can either restrict
the parties to acquire protection only under one act, in the cases of
infringement the court applies either the interpretation of the statues or in
absence of legislation the court often uses its own conscience to pass the