In today's globalized economy, Intellectual property (IP) emerges as the cornerstone of innovation and serves as the bedrock for business owners to enjoy exclusive rights to the ownership as well as the economic benefits arising out of their unique creations. There are several types of intellectual property inter alia design, copyright, trademark, geographical indications, patents and trade secrets, etc. For the purpose of this article, focus will be placed on Trademarks and Designs.
With the wide scope of IP protection offered in
One such overlap also exists between
Analysing Meaning and Definition
Trademarks act as a source identifier which helps in distinguishing the goods and services of one person from that of another1. Whereas a design consists of the shape, configuration, pattern, or ornament applied to an article by an industrial process that enhances its aesthetic appeal2. While the definition of trademarks mention under the statute1 expressly includes shape of goods as a registrable form of trademark, on the contrary, from a bare perusal of the definition of design provided under section 2(d) of the Designs Act, 2000, it becomes evidently clear that the scope of design expressly excludes trademarks from the purview of being registrable under designs.
The two thigs might prima facie seem to be similar, however, major differences between shape of goods as a trademark and design exist, which have been enumerated in the tabular representation below:
S. No. | GROUNDS | SHAPE TRADEMARK | DESIGN |
1. | Purpose | A shape trademark helps in differentiating the goods of one person from that of the competitors. | Design protects the aesthetic and visual appeal of the article. |
2. | Distinctiveness | For a shape mark to qualify as a trademark, it ought to have distinctiveness. | There's no statutory requirement of distinctiveness in Design. |
3. | Primary Qualification | The primary qualification for a Shape mark is its tendency to act as a Source Identifier. (Aesthetic value may not be present) | Presence of visual or aesthetic appeal is the primary feature of a design mark. The article to which design has been applied shall be attractive and appealing to the eye. (Source identification feature may not be present) |
4. | Prerequisite | There's no requirement for a shape mark to be novel, original or unpublished to acquire registration. Thus, a shape mark can be used prior to registration. | The prerequisite for a design mark registration is its novelty, originality and the shame shall not be previously published. Thus, a Design cannot be used prior to registration. |
5. | Rights | Rights present before registration too. | Rights granted post registration. |
6. | Duration of Protection. | Trademarks registration is granted for a period of 10 years and can be renewed for subsequent 10 years indefinitely. Thus, trademark registration exists till perpetuity. | Design registration is also granted for a period of 10 years however, it can be renewed for the subsequent five years only. Therefore, a design registration can last for a maximum duration of 15 years. |
EXPLORING THE OVERLAP
Rights Enforcement Mechanism
The basic requirements of registration of a design mark bars prior publication of a design and demands its novelty, thus, the statute allows no scope for grant of any common law rights to institute proceedings for passing off with respect to a design mark and in case of encroachment of rights, the innovator only has the legal recourse of infringement, which is a statutory right provided under section 22 of the Design Act, 2000. On the other hand, a trademark registration does not necessitate any such requirement for novelty. In case of dispute, while a registered trademark owner has the right to institute suit for infringement under Section 29 of the Trade Marks Act, 1999, the prior user of a
Now, the question of whether or not passing off action can co-exist with Design Registration has been answered by courts in different cases.
It is imperative to review the case of
The subsequent case of
"134. I shall now sum up my answers to the questions under the reference in the following manner:
a) A suit by the registered proprietor of Design for infringement of the registered design is not maintainable against another registered proprietor under the Designs Act, 2000 in so far as the registration covers the same features of the shape and configuration of the same article under the Design.
b) The remedy of passing off in so far as it relates to claim of protection for shape of articles is not available for the purposes of enforcement of rights and remedies under the Design Act. The said remedy is clearly absent under the Designs Act considering the avowed objective of the Act of 2000 which is to provide limited protection with no unnecessary extension.
c) The remedy of passing off in so far as it relates to claim of protection for shape of articles cannot be joined with the suit for infringement of the registered Design. The said remedy of passing off is available in alternative to the statutory protection conferred by the Design Right. For the purposes of the same, the suitor has to elect between the two inconsistent rights and remedies having distinct objects and policies.
Additional legal points determined
a) Notwithstanding the above said conclusion in (b) and (c), the remedy of passing off would continue to be available along with the infringement of registered designs and can be joined with the same in order to prevent consumer confusion which may be caused by the use of trade mark, get up, trade dress or in any other manner excepting the shape of the goods which is or was forming the subject matter of the registration of the Design.
b) The remedy of the passing off in so far as the shape of the article is concerned shall also be available even during currency of the design monopoly or even after the expiry of same to the extent that the claim of the feature of the shape is not covered within the novelty claim under the Design monopoly rights and the said claim of the protection qualifies all the necessary ingredients of the Trade Mark.
c) A remedy of passing off in so far as the shape of the article is concerned shall not be available even after the expiry of the Design to the extent the said feature of the shape of the article is covered within the novelty claim as made under the Design Right as after expiration of the Design, the novel shape claimed under the Design Act goes in public domain. 135. The reference is disposed of."
Further, in the judicial pronouncement of Mohan Lal v.
- A holder of a registered design could institute a suit against a defendant who is also in possession of a registered design.
- A holder of the registered design will be entitled to institute an action of passing off in respect of a design used by him as a trade mark provided the action contains the necessary ingredients to maintain such a proceeding.
- A composite suit for infringement of a registered design and a passing off action would not lie.
Further, in the judicial pronouncement of
Inference Drawn
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After a comprehensive analysis of the aforementioned case laws, it can be concluded that there is ambiguity regarding whether a suit for the infringement of a registered design is maintainable against another registered proprietor of a design under the Design Act, 2000. In some cases, the court has allowed such a suit for infringement by a registered design holder against another registered design holder. However, in other cases, the court has taken a dissenting opinion and decided not to entertain such suits of infringement. This seems like an ambiguity which will eventually be clarified as more litigation comes to life.
- Before initiating the process, ensure that your design has not been publicly disclosed.
- Begin by seeking design registration for your creation.
- Following the design registration, apply for trademark registration specifically for the shape of your goods.
- Subsequently, pursue a trademark registration for distinctive features apart from the shape of goods. For Example: the colour, brand name, trade dress etc.
- It is strongly advised against obtaining a copyright registration for any design intended for reproduction over 50 times via an industrial process. This is due to the fact that the protection granted by copyright will cease to apply once the design is reproduced more than 50 times through an industrial process, as stipulated by Section 15 of the Copyright Act, 1957.
- In the event of a dispute, consult with a legal expert and elect the relevant statute 'Trade Marks Act, 1999 or the Design Act, 2000' under which you wish to enforce your rights.
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Regarding the question of whether the remedy of passing off is available in the absence of express saving or preservation of common law by the Designs Act, 2000, it can be ascertained that the remedy for passing off the shape of goods is not available under the Design Act, 2000.
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When reviewing the question of whether the concept of passing off available under the Trade Marks Act can be combined with the action under the Designs Act when they are mutually inconsistent with the remedy under the Designs Act, 2000, it is clear from several case laws that a passing-off action with respect to aspects other than the shape of goods in a trademark may be raised. However, such a remedy of passing off cannot be pursued when it comes to the shape of goods feature of the trademark. A suit for infringement of the shape of goods under the Design Act cannot be joined with a suit for passing off the shape of goods under the Trade Marks Act. For this, the innovator has to choose between the two available remedies. Having said that, a suit for infringement of the shape of goods under the Design Act can be combined with a suit for passing off all the other features of the trademark, including trade dress, word mark, getup, etc., except for the shape of goods.
Legislative Solutions
The legislation should provide clearer guidelines on when an aesthetic feature can be protected as a trademark and when it should be protected solely as a design. This would reduce ambiguity and legal disputes. Streamlining the registration procedures for trademarks and designs could simplify the process for IP owners. Establishing mechanisms for coordination between the Trademarks Registry and the Design Registry could improve communication and reduce potential conflicts. This might involve exchanging information on overlapping applications or collaborative efforts to resolve disputes.
On-ground Solutions:
Educating business owners regarding the various IP protections offered in the country along with their pros and cons would further lead to an informed decision by the business owners. Apart from this, certain suggestions with respect of the protection of the design/shape of goods are to be kept in mind namely
Conclusion
Navigating the overlap between trademarks and designs in
Footnotes
1. Section 2(1)(zb) of the Trade Marks Act, 1999 "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;"
2. Section 2(d) of the Design Act, 2000 ""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 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957)."
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5. Mohan Lal v.
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The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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