Trademarks, copyrights and designs often seem to overlap as being part of same gamut of rights, that is, intellectual property.In an eminent judgment by the Delhi High Court in the case of Midas Hygiene Industries Pvt. Ltd. vs. Sudhir Bhatia,[1] it has been laid down that labels on the package of goods are not included within the definition of “Designs” in the Designs Act, 2000.
Section 2(d) of the Act defines designs as “features of shape, configuration, pattern, ornament or composition of lines or colors 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 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957”
The facts of the case are such –The Appellants, Midas Industries claim to spearhead the production of insecticides and pesticides in the form of chalks in India.Registrations for trademarks such as “Krazy Lines” and “Lakshman Rekha” as well as copyright over packaging were obtained.The present appeals were filed under section 72 of the Indian Copyrights Act[2], aggrieved by the decision of the Copyright Board which expunged the registered copyrights upon the petition of the Respondent. The main issue adjudicated upon by the High Court was whether artistic works could be registered as “designs”, and hence whether section 15(2) of the Copyrights Act would be applicable to the same.
Section 15(2) of the Copyrights Act deals with special provisions about copyright in designs registered under the Designs Act. It states that (1) Copyright shall not subsist under this Act in any design which is registered under the Designs Act and ;(2) Copyright in any design, which is capable of being registered under the Designs Act, but which has not been so registered, shall cease as soon as any article to which the design has been reproduced more than 50 times by an industrial process by the owner of the copyright, or, with his license, by any other person.
Delineating the various overlapping rights, the Court stated that the statutory definition of design excludes artistic work and labels used as trademarks. Thus,the labels of both, Krazy Lines and LaxmanRekha are trademarks as well as copyrights and are hence excluded from the definition of design. Design registration will not be applicable if the work is not significantly distinguishable from known designs and since in this case there is no unique or novel design of the packaging or its label, the question of design registration does not arise; which in turn disables Section 15(2) from operation.
[1]Judgment dated 4 November 2015,RFA No. 239, 240 and 241 of 2011. Available at http://lobis.nic.in/ddir/dhc/SRB/judgement/05-11-2015/SRB04112015RFA2392011.pdf.
[2] Section 72 of the CopyrightsAct: Appeals against orders of Registrar of Copyrights and Copyright Board. – (1) Any person aggrieved by any final decision or order of the Registrar of Copyrights may, within three months from the date of the order or decision, appeal to the Copyright Board. (2) Any person aggrieved by any final decision or order of the Copyright Board, not being a decision or order made in an appeal under sub-section (1), may, within three months from the date of such decision or order, appeal to the High Court within whose jurisdiction the appellant actually and voluntarily resides or carries on business or personally works for gain;