Many countries provide dual defence in the intellectual property rights for a single or a common commodity, Indian laws are distinct. To review, main divisions of the intellectual property rights are: –
- a) Trademark rights which are available for name, shape, logo etc.;
- b) Copyright which is available for artistic creative works in art, literary, music etc.;
- c) Patent that grants monopoly to use and exploit a particular product or process for a certain period; and
- d) Designs rights which gives protection for the 3D objects like cutlery, trade dress, motifs and patterns on fabric/ceramic etc.
The term of Copyright is one of the most lengthiest . Term of a trademark is continuous subject to periodic renewal and no cancellation action. Patent lasts for 20 years–though in practice it only starts to make money after few years of grant. Designs have the shortest term of 15 years–10 years further extendable to another 5.
Protection in copyright is granted from the moment it is created. However, Designs Act, 2000
–as also in 1911 Act protection is available to a person once he applies and thereafter granted a registration for his design. The Act bars displaying the article in question to general public before the application.
An artwork is protected under the Copyright Act 1957. But, the moment the artwork is applied to any article to give the article an aesthetic appeal, and once the article is sold in more than 50 number of units, under Section 15(2) of the Act, the artwork loses its copyright and comes under the realms of the design law.
Here is where the problem comes. Many designers, inadvertently, display their creations in fashion weeks, in their boutiques, showrooms etc. This constitutes displaying to general public and their creations are not eligible for design protections. When some other persons copies the design, the designer, based on wrong legal advice or her own understanding, files an action for copyright infringement against the person.
Delhi High Court in the ruling of Samsonite Corp vs Vijay Sales[1] clarified the situation that once an object has been sold in over 50 units, the only protection is under the Designs Act.
The Plaintiffs (Dart & Tupperware Indian Pvt. Ltd.) claimed ownership of the know-how, intellectual property rights and trade secrets in its designs used for the manufacture of Tupperware products. They further claimed that they were a world-famous company having immense goodwill and reputation and that the Defendants i.e. Techno Plast, the proprietor of the mark “Signoware” had copied their product designs which amounted to design infringement, copyright infringement, passing off, copying designs by reverse engineering, unfair competition and unfair trade practice. On the other hand, the Defendants claimed that the products were distinct in terms of trade name, appearance, color scheme, and were a product of their own skill and knowledge. The Defendant also claimed that the designs were in public domain.
The Court looked into the meaning of “publication” and noted that it meant the availability of knowledge or awareness about a particular design. Registration is only prima facie evidence of novelty and originality and the designs lacked originality as the designs had been published in the 1989 book, “The Tupperware Cook”. The designs lacked originality as they were substantially similar to those published earlier. Therefore, the Court directed that the Plaintiff would be dis-entitled to injunction on this ground. The Court also rejected the claim of the Plaintiff viz. copyright infringement, as the claims clearly fell within the ambit of the Designs Act, and accordingly, copyright claims in industrial drawings and designs, to be used for manufacturing processes were not maintainable. The copyright ceases to exist once the design has been applied and reproduced over 50 times.
However, since there were serious evidential doubts in proving that the copyright survived design registration, the Court did not injunct the Defendants. As to the claim of passing off, the single judge held that the situation was actually contrary. As per a report, the Defendant’s salesmen made representations to the customers not that their products were Tupperware products, but that they were as good in quality and appearance, yet half the price of Tupperware. Thus, the Defendants were not passing off their goods; rather they were merely puffing up their products by claiming superior quality.
PLAINTIFF’S CONTENTIONS
A visual comparison of the parties’ products proved that the Defendants were copying the plaintiffs’ products. Shapes and colors may acquire distinctiveness and are protectable by law. A passing off action is not confined by trademark only, it also covers trade dress.
That the Single Judge had incorrectly relied upon the Defendants’ report which was of only one incident, and that the similarity or confusion was not to be judged by the claim of the parties but rather by what the products were saying and representing about themselves.
That the Single Judge had erred in concluding that original works such as `product drawings’ intended for manufacture would not qualify as `artistic works under Section 2(c)(i) of the Copyright Act, if they were used to manufacture the designed article.
CONTENTIONS OF THE DEFENDANTS
That the 13 designs asserted by the Plaintiff relate to articles such as bowls, casseroles and lunchboxes etc. which are commonplace and lack novelty and originality. These designs were “pre-published” in nature and in the public domain.
That no copyright can subsist in a registered design.
That it cannot be asserted that copyright can subsist in drawings of purely functional day to day articles, unless they have inherent creativity.
That drawings of glasses, bowls etc. per se are incapable of copyright protection as they are not artistic works.
JUDGEMENT OF THE DIVISION BENCH
The Court was pleased to agree with the analysis of the Single Judge that the designs were prima facie in the public domain and lacked novelty, and hence, could not be protected by the Designs Act despite registration.
The Court held that the question of asserting a copyright infringement claim independently cannot arise at all when design protection subsists, but infringement has not been prima facie established. However, the Court went on to discuss the issue as an arguendo. It observed that the language of Section 15 of the Copyright Act makes it clear that copyright does not subsist in a registered design as this design acquires a commercial element on mass reproduction which is not the case with an artistic work. The court noted that this is a complex issue, as works of art which have been registered as designs lose even copyright protection, thus undermining the efficacy of copyright itself. The English case of Elzie Chrisler Segar (Deceased) v O & M Kleeman Ltd. was discussed which pertained to the character, “Popeye the Sailor” used in comics and later reproduced in merchandize. In this case, the House of Lords distinguished between copyright and design copyright and held that design rights in this character did not result in the extinction of copyright. Considering this case, the Court finally concluded that copyright would subsist even after design registration in an original work of art such as a painting. The Court finally concurred with the single judge that the drawings of commonplace household items do not satisfy the standards of minimum creativity and cannot be legitimately monopolized.
The Court held that action for passing off is a common law right, independent of the Designs Act. However, for a passing off action, it must be proved that the general public associates the shape, trade dress etc. with the Plaintiff alone which was neither pleaded nor established. Holding that there was no infirmity with the conclusions of the single judge, the Court dismissed the appeal.
Reference:
[1]73 (1998) DLT 732.
