OVERLAP BETWEEN COPYRIGHT, DESIGNS AND TRADEMARKS
INTRODUCTION:
In the dynamic and competitive world of Intellectual Property, creators and businesses rely on legal mechanisms to protect their innovations and distinctive elements. Two key tools in this arsenal are copyright, designs, and trademarks. While each serves a distinct purpose, there is a significant overlap between them, creating a fascinating intersection where creativity meets branding. This article explores the interplay between copyright, designs, and trademarks, shedding light on their shared boundaries and unique functions. However, there is a slight overlap between the IP rights of copyright, designs, and trademarks. Before delving into the overlapping between these three terms, basic details must be known, as clearly mentioned below.
DIFFERENCE BETWEEN COPYRIGHT, DESIGNS AND TRADEMARKS:
The terms, as per Indian laws, detail the Intellectual Property Rights of copyright, designs, and trademarks.
DEFINITION OF COPYRIGHT:
The Indian Copyright Act, 1957, grants copyright protection to five types of works, including literary works (e.g., brochures, manuals, blog posts, articles, contents of a website, and any other marketing material, software, databases, etc.), artistic works (paintings, drawings, and photographs), musical works, sound recordings, cinematograph films, and dramatic works (dance arrangements, skits, dramas, etc.).
DEFINTION OF DESIGNS:
Designs law is expressed under the Designs Act, 2000. Section 2(d) of the Designs Act, 2000, defines designs as the features of shape, configuration, pattern, ornament, or composition of lines or colors applied to any article, whether in two-dimensional or three-dimensional forms, by any industrial process or means, whether manual, mechanical, or chemical, separate or combined, which, in the finished article, appeals to and is judged solely by the eye. However, the functional aspects are not covered under these designs; they will more appropriately be protected under patent laws.
DEFINITION OF TRADEMARK:
A trademark is a graphically represented mark that distinguishes the goods or services of one person from those of others. It may include the shape of goods, their packaging, and combinations of colors (Section 2(zb) of the Trade Marks Act, 1999). Types of trademarks include words, logos, shapes, patterns, colors (single), colors (combination), sound, motion, multimedia, hologram, service marks, collective marks, series marks, certification marks, etc.
PURPOSE/INTENTION:
Trademark:
The main essential function of a trademark is to be a source of identification. There has to be some kind of trade that the person conducting, with respect to which another trademark exists. So, there has to be an association between one person’s mark and the trade that has to be the face of your brand. If people see your trademark, your purpose or intention should recall your particular trademark.
Copyright:
Copyright exists in an original work, as clearly mentioned in the definition above. There is no source of identification like a trademark.
Designs:
It is basically something in relation to the appeal to the eye, for which protection will be provided for the purpose exactly and related to the aesthetics of the particular product.
REGISTRATION VS NO REGISTRATION:
TRADEMARK:
It is not mandatory to have registration; even if registration has not happened, it can be valid.
COPYRIGHT:
For copyright, registration is not absolutely required; even without registering the copyright, the person can enjoy their rights.
DESIGN:
Whereas for designs, registration is absolutely mandatory. With registration of designs under the Designs Act, it is not valid.
OVERLAP BETWEEN DESIGNS AND TRADEMARKS:
The overlap does exist between designs and trademarks. According to the definitions included under both the Trademarks Act and Designs Act, it clearly states the shape of goods in the Trademarks Act and features of shape under the Designs Act. But both can be registered under these two laws, where any infringement happens in the designs, if it is registered, it can get a claim and can sue the person who infringes. Also, under trademark law, a suit can be filed and claimed by this if any passing off occurs, but it should be like a source of identification. There is indeed an overlap between designs and trademarks. Both the Trademarks Act and Designs Act encompass the shape of goods, with trademarks focusing on the shape of goods as a source of identification and designs emphasizing the features of shape. Notably, an infringement under either act can lead to legal action, allowing registered designs or trademarks to be defended against unauthorized use.
However, a challenge arises when considering the protection of the shape of goods under trademark law. To qualify for trademark protection, the shape must be more than just a product; it should establish a specific association in the minds of consumers with a particular source of goods or services. This poses a difficulty because a mere object, even if it can be sold as a product, may lack the distinctive identification needed for trademark protection.
Attempting to protect the shape of goods as a trademark becomes particularly challenging. Typically, trademarks gain protection by demonstrating popularity and recognition over the years. Without a strong association with the public, it becomes challenging to register the shape of goods as a trademark.
Furthermore, if a trademark has already been in use, gained reputation, and is filed for registration, attempting to subsequently register it as a design becomes impossible. Section 4 of the Designs Act prohibits the registration of a design that has been previously published or revealed. To protect a product under design laws, it must not be published or disclosed before filing the application with the Designs office.
In essence, the overlap between design and trademark lies in the challenge of protecting the shape of goods. Trademarks require a distinct source of identification, making it difficult to register the shape of a product unless it has gained substantial recognition. On the other hand, design laws focus on safeguarding the aesthetics of goods, emphasizing the need for confidentiality before filing an application with the Designs office.
Example:
If any company manufactures toys and has a number of toys, you will not protect all of them. You will not get registered as trademarks merely because the shape of goods can be protected as trademarks. All of them will actually get protection under the design law because that is what design law is for—protecting the aesthetics of a particular good.
Case Law:
In SmithKline vs Hindustan Lever ,this case held that passing off in the trademarks which are not registered is a person’s right based on the common law structure despite the remedies for infringement being provided in section-22 of the Design Act, 2000; it will be available to a person.
OVERLAP BETWEEN DESIGNS AND COPYRIGHT:
The issue of dual protection or overlap between design and copyright is explicitly handled in section 15 of the Copyright Act. This section stipulates that copyright will not exist for a design that has been registered under the Designs Act, 2000. Essentially, when a design is officially registered under the Designs Act, the individual must relinquish their rights under the Copyright Act.
However, a notable contention arises when a design is not registered under the Designs Act. In such cases, if the article is reproduced more than 50 times through an industrial process, the copyright protection for the owner’s design in that article ceases. This provision establishes a clear distinction, outlining the conditions under which copyright coexists with design protection and when it gives way based on registration and reproduction criteria.
Case Law:
In the subsequent case of Ritika Private Limited vs Biba Apparels Private Ltd, the precedent established in section 15 of the Copyright Act was directly applied. The plaintiff, Ritu, had not registered her sketches or drawings under the Designs Act, and the reproduction of the designs exceeded 50 times. Consequently, she was denied any protection against infringement by the defendants under both the Copyright Act and Designs Act. This application of the legal principle underscored the significance of design registration and the impact it has on the concurrent protection afforded by Copyright law.
OVERLAP BETWEEN COPYRIGHT AND TRADEMARK:
Overlap between trademarks and copyrights is straightforward, and there are no rules or stated provisions in the statute regarding the overlap. Anything which is a source identifier is going to be the trademark, anything which is artistic can have copyright protection.
Example:
Starbucks coffee is the best example of this overlap between copyright and trademarks. This particular mermaid crown is Starbucks’ logo and is artistic in nature, coming under copyright as well as its logo comes under trademark. If anyone uses a very similar kind of logo, then Starbucks has the right to sue the other company and can claim against them.
CONCLUSION:
The overlap between copyrights, designs, and trademarks underscores a complex legal landscape where creative works may be subject to concurrent protection. Balancing design registration, copyright subsistence, and trademark distinctiveness is crucial. Section 15 of the Copyright Act exemplifies the interplay, requiring careful consideration of reproduction and registration factors. While designs and shapes can be protected under trademarks, establishing rights demands consumer association. Strategic registration and legal insights are imperative, as illustrated in relevant cases. Overall, a nuanced understanding of these intellectual property realms is vital for comprehensive protection, emphasizing the need for precise legal navigation in this intricate domain.
Author: BOKKI HARIKA, a Student of sri Padmavathi mahila viswa vidyalayam)
