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Overlapping Provisions of Intellectual Property Legislations

When we talk about the subject of overlapping amongst the provisions of Intellectual Property Legislations, we need to look at the provisions of The Copyright Act, 1957, The Trade Marks Act, 1999 and The Designs Act, 1911/2000.

Before we talk about overlapping, we must understand the purpose and object of each of the legislations separately.

The overall object of the copyright law is to protect the original literary, dramatic, musical and artistic works, cinematograph films, sound recordings, broadcasting rights and/or performers right.

The object of Design Law is to protect the features of shape, configuration, pattern or ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms by industrial process or means, whether manual, mechanical or chemical, separate or combined which in the finished appeal to and/are judged solely by the eye, but does not include any trade mark or property mark or artistic work.

The object of The Trade Marks Law is to protect the marks which performs the role of identifying the production or services with a particular source of manufacture or so as to indicate a connection in the course of trade.

The object of The Patents Law is to protect new and useful inventions as to the process, method or manner of manufacture, machine, apparatus or other article and/or substance produced by manufacture.

“Copyright” is defined in Section 2 (c) of The Designs Act to mean exclusive right to apply a “design” to any article in any class in which design is registered.

“Copyright” in Section 14 of The Copyright Act is defined to mean an exclusive right to authorize the doing of any of the acts as prescribed therein.

It therefore, means that the expression “Copyright” has a different meaning and connotation in both Intellectual Property related enactments i. e. The Copyright Act, 1957 & The Designs Act, 2000.

S. 15 of The Copyright Act precludes the subsistence of Copyright in the Design which is registered or is capable of being registered as a “design” under The Designs Act, 1911.

S. 15 of The Copyright Act precludes the subsistence of Copyright in the Design which is registered or is capable of being registered as a “design” under The Designs Act, 1911.

Though, the intention of the legislature is to avoid overlapping of the subjects of “Copyright” as defined and protected under The Copyright Act from the subjects of “Copyright” as defined and protected under The Designs Act, 1911 but a serious overlapping has occurred because of the new Designs Act, 2000 which came into in force on 11th May, 2001.

The provision of Section 15 of The Copyright Act has not been amended to preclude the Designs which are registered or capable of being registered under The Designs Act, 2000 from the ambit of the provision of Copyright Law.

A unique situation has emerged on the interpretation of Section 15 of The Copyright Act. Copyright shall continue to subsist under the Copyright Law in respect of a subject of a Design even if the same is registered or is capable of being registered under The Designs Act, 2000, though it was not so under The Designs Act, 1911.

The definition of “design” under The Design Act, 2000 has been expanded to include “Composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms”.

The object of Design Law is to protect novel designs applied to the shape & configuration of an article to be manufactured & marketed. The object of design law is not to prevent the infringement of Copyrights as are governed by the Copyright Law.

If a two dimensional drawing (subject matter of Copyright as an artistic work under The Copyright Law) is three dimensionally reproduced into an article, it is an infringement of Copyright under Section 14(C )(1) read with Section 55 of the Act.

Where a two dimensional drawing is made by an artist from a three dimensional object in which no copyright would subsist under the Design Law but still it would constitute infringement of copyright under The Copyright Act.

Similarly, a two dimensional work consisting of composition of lines or colours applied to an article would be covered by the definition of “design” under the Design Act, 2000. The composition of lines or colours, say for example, if applied to a label or a carton would take the said label or a carton within the ambit of Design Law and would thus be precluded from protection under The Copyright Law.

On the other hand, composition of lines or colours in themselves would come within the ambit of “artistic work” and reproduction thereof two dimensionally or three dimensionally (as applied to an article) would be protected as copyright under Section 14 of the Act.

It would, thus, be seen that on the one hand the composition of lines or colours would fall within the scope of design and on the other hand would also fall within the scope of copyright, but at the same time, by virtue of Section 15, the subsistence of copyright in such composition would be excluded.

The matter will not rest here. Under the Copyright Law, a composition of lines or colours made by an artist and as applied to an article in the shape of a label or a carton can perform the role of a "trade mark" as the same is capable of being used in relation to goods and it is for this reason under Section 45 of the Act, the Registrar of Trade Marks is empowered to issue a search report in respect of such artistic works as are used as a trade mark as a pre-requisite for Copyright registration. This would mean that an artistic composition of lines or colours as applied to an article can perform the role of a "trade mark". If that be so, the definition of design under Section 2(d) of the Act precludes trade mark from its ambit and scope. If the composition of lines or colours applied to any article is considered to be a trade mark (which is capable of being so considered under Section 45 of the Act) then no copyright in the design would subsist therein.

The overlapping and conflict in these provisions would mean confusion and multiplicity of legal proceedings. The infringement of copyright and trade marks are civil as well as criminal wrongs as against the infringement of designs which is purely a civil wrong. The effect of overlapping and conflict would certainly have a repercussion on the remedies which the owner of a trade mark, copyright or a design may be entitled to invoke or may invoke as per his convenience.

Now coming to the shape of an article. Hence-before, it has always been understood that shape of an article being the subject matter of “Design Law” because of its aesthetic value. The protection under the Design Law is for a limited period of time and on expiry of the term of a design, copyright therein ceases to subsist and such design falls in public domain. If the shape of goods or packaging is considered as “marks” under The Trade Marks Act, 1999 then the right therein becomes perpetual. The proprietors of “lapsed designs” can legitimately claim the “shape of their products or packaging as their “trade marks” and consequentially become entitled to a perpetual right therein irrespective of the fact that such shapes should fall under the ambit of Design Law and entitled to limited monoply.

The definition of the expression “Mark” has now been amended in the Trade Mark Act, 1999 so as to include “shape of goods, packaging or combination of colours or any combination thereof. If shape of the goods or packaging or combination of colours is defined as a mark under Section 2(m) of the Act, then such shapes of goods or combination of colours would automatically stand excluded from the definition of design.

It is not understood, as to what, the legislature intends to do. As we all know, the concept of Intellectual Property Law is based on the principles of deception and confusion, I am convinced, the legislature in its wisdom has followed the same principles while legislating these provisions of the Acts.

Copyright Amarjit Singh, Amarjit & Associates. All Rights Reserved. Any unauthorised reproduction is strictly prohibited.

 

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