Overlapping Rights: Designs, Copyright, and Trademarks in India

8.1 Intellectual Property Rights

Submitted by

Devraj Agrawal

UID: UG21-08

Academic year (2024-2025)

B.A.LL.B. (Hons.) Semester- VIII

Submitted to

Dr. Divita Pagey

MAHARASHTRA NATIONAL LAW UNIVERSITY,

NAGPUR

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 TABLE OF CONTENT

Page
Sr. no Topic
number
“ 1.1 Introduction ” 2

1.2 Aims of the project 2

1.3 Research objectives 2

1.4 Research questions 3

1.5 “Research methodology” 3

2.1 Design 3

2.2 Copyright 4

2.3 Trademark 5

3.1 Overlapping between Design’s Copyrights and Trademark 6

3.1.1 Overlap between Design and Trademark 6

3.1.2 Overlap between Copyright and design 8

3.1.3 Overlap between Trademark and copyright . 9

4.1 “ Overlapping between Design’s Copyrights Law in Indian Perspective ” 9

5.1 Conclusion 12

5.2 Reference 12

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1.1 Introduction

In the ever-changing and fiercely competitive realm of intellectual property, companies and
artists depend on legal safeguards to preserve their inventions and unique features.
Trademarks, designs, and copyright are important weapons in this toolbox. Even while each
has a unique function, they all significantly overlap, making the meeting point of creativity
and branding intriguing. This Project examines how copyright, designs, and trademarks
interact, illuminating their commonalities and distinctive purposes. The intellectual property
rights of copyright, designs, and trademarks do, however, somewhat overlap. An overlapping
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issue is one where the holder of the Intellectual Property Right attempts to declare his right
under more than one idea. Virtual products are safeguarded under both intellectual property
regulations and patent regulations. Essentially, modern plan licenses that could be
safeguarded under the Design Act, in unambiguous cases, accumulate security under
copyright and trademarks also. The courts have largely adopted two strategies when problems
arise due to the many types of intellectual property rights. The courts should either permit the
groups to approve such liberties and benefit from such crossover, or they should limit the
extension by requiring them to seek assurance under just one of the rules. Since each right's
extension and obstacle are unique, the last option has the advantage of a clearer division and
better execution of the rights. Since it is typically impossible to avoid overlap, it becomes
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necessary to maintain cordial cooperation between these rights.

Basic information must be understood before exploring how these three concepts overlap, as
is made obvious below.
1.2 Aim of project

To examine India's legal system, difficulties, and ramifications of the rights overlap between
designs, copyrights, and trademarks, with an emphasis on possible disputes, harmonization,
and the effects on the enforcement and protection of intellectual property.
1.3 Research Objective
1. To examine the statutory provisions governing designs, copyrights, and trademarks in
India and identify areas of potential overlap.
2. To analyze judicial precedents and case laws that highlight conflicts or harmonization of
rights under these laws.
3. To assess the practical implications of overlapping rights for stakeholders, including
creators, businesses, and legal practitioners.

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4. To propose solutions for better coordination and clarity within the intellectual property
framework in India to address overlapping rights.
1.4 Research Question
1. What are the key areas of overlap between designs, copyrights, and trademarks under
Indian intellectual property laws?
2. How have Indian courts interpreted and resolved disputes arising from overlapping rights
in IP laws?
3. What strategies or reforms can be introduced to address ambiguities and conflicts in the
Indian IP framework concerning overlapping rights?

1.5 Research Methodology

The doctrinal research methodology was used in this research report to explore the
aforementioned problem. It is a research that is based on sources and derives its information
from both traditional and modern written text sources, including books, journals, and online
sites. This approach is analytical and descriptive at the same time. To give an insightful and
enlightening study, the researcher worked very hard to critically examine all of the sources.
As a true addition to this study, the opinions of academics, researchers, and other experts who
have dealt with this topic have been included.

2.1 Design

According to Section 2(d) of The Designs Act of 2000, a design combines components of the
following and notably contains the style of any piece or product of production:

 Shape,

 Arrangement,

 Design,

 Decoration,

 Arrangement of lines or colors.

These are used for any article that may have many layers or both of these configurations. The
material should be presented via a contemporary cycle or another method (substance,
mechanical, or manual).
Design legislation is defined under the Designs Act of 2000. Section 2(d) of the Designs Act
of 2000 defines designs as the features of shape, configuration, pattern, ornamentation, or

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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, functional aspects are not covered by these designs; they will be more
appropriately protected under patent rules.1
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. It
usually results from a single cycle or from a combination of various cycles. The finished
product should be sought after and evaluated only based on appearance. The setup prohibits
the use of mechanical devices alone for development. Additionally, it has a brand name that
is defined by Section 2(1)(v) of the Trade and Merchandise Marks Act, 1958, a property
mark as defined by Section 479 of the Indian Penal Code, 1860, and any creative work as
defined by Section 2(c) of the Copyright Act, 1957. For designs, registration is absolutely
mandatory. With registration of designs under the Designs Act, it is not valid.
According to Section 5 of the Design Act, anyone claiming to be the owner of a modern
design may apply for enrollment, which typically lasts for ten years (though it may also be
reinstated for five years after paying reestablishment fees).

2.2 Copyrights

According to Section 14 of the Indian Copyrights Act, 1957, the inventor, proprietor, or
manufacturer of the copyright is granted a plethora of benefits.
Definition- 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.).
Copyright protection is granted to creators of original works. Scholarly works, dramatic,
musical, imaginative, cinematographic, and sound-based narratives are all included in the
work. Among the liberties granted are the rights of transformation, generation, dissemination,
interpretation, and correspondence with the general public. Copyright exists in an original

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The Designs Act, 2000 (India), Section 2(d), defines "design" and outlines its protection criteria.

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work, as clearly mentioned in the definition above. There is no source of identification like a
trademark.
Unlike the real thinking, the "expression of the idea" is protected. Abstract works include
computer programs (including computer data sets conveyed through words, codes, plans, or
other structures), tables, and aggregations. Simply put, business owners are eligible to use
these liberties. For copyright, registration is not absolutely required; even without registering
the copyright, the person can enjoy their rights.2

2.3 Trademark

With the globalization of the world, trademarks, brand names, markings, and so forth gained
enormous value and, as a result, needed some basic insurance. The original Indian Trade and
Merchandise Act, 1958 was changed in 1999, and the Trademarks Act was created in
accordance with the TRIPS (Trade-Related Aspects of Intellectual Property Rights) concept,
which considered effective ways to ensure something substantially similar.
Definition- 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.
Numerous arrangements are included in the demonstration, such as recording applications for
multiple classes, administering enrollment marks, extending the enlisting period, and so on.
As seen in cases such as Yippee Inc. vs. Akash Arora and Tats Children and Manu Kosuri &
Ors, the Indian legal executive has also taken aggressive steps to protect brand names by
extending the security to space names. In these instances, the space names were treated like
company assets rather than just another website address, and as a result, they are eligible for
protection similar to that of a registered trademark. It is not mandatory to have registration;
even if registration has not happened, it can be valid. 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
2
Copyright Act, 1957 (India), Section 13(1), explicitly excludes designs registered under the Designs Act from
copyright protection.

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people see your trademark, your purpose or intention should recall your particular
trademark.3
A trademark must be reestablished within six months or fewer after being enrolled for over
20 years. The Trademarks Act of 1999's Section 135 addresses trademark infringement and
passing off.

3.1 Overlapping between Design’s Copyrights and Trademark:

3.1.1 Overlap between Design and Trademark

There is some overlap between trademarks and designs. In accordance with the definitions
found in both the Designs Act and the Trademarks Act, the design aspects under the Designs
Act and the shape of goods under the Trademarks Act are explicitly stated. However, under
these two laws, both can be registered. If infringement occurs in the designs, the registered
design can obtain a claim and prosecute the infringer. Additionally, if there is any passing off,
a lawsuit may be brought under trademark law, but it must be similar to a source of identity.
It is true that trademarks and designs overlap.
The shape of items is covered by both the Designs Act and the Trademarks Act, with designs
highlighting the characteristics of shape and trademarks concentrating on the shape of goods
as a source of identification. Notably, a violation of any act may result in legal action, which
enables the defense of registered trademarks or designs against unapproved usage. However,
there is a problem when it comes to trademark law's protection of product shape. The shape
must be more than just a product in order to be eligible for trademark protection; it must
create a distinctive association in the minds of customers with a specific supplier of products
or services. This is problematic because, even if it can be marketed as a product, a simple
object could not have the distinguishing characteristics required for trademark protection. It is
very difficult to try to protect a product's shape as a trademark. Trademarks are usually
protected by proving their recognition and popularity over time. It becomes difficult to
register a product's shape as a trademark if there isn't a strong public association.
Furthermore, it is impossible to try to register a trademark as a design after it has already
been used, established a reputation, and been filed for registration. A previously published or
disclosed design cannot be registered under Section 4 of the Designs Act. A product must not
be revealed or published before submitting an application to the Designs office in order to be

3
Trade Marks Act, 1999 (India), Section 2(zb), provides the definition and scope of trademarks.

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protected by design regulations. The difficulty of preserving the shape of products is
essentially where design and trademark overlap. It is challenging to register a product's shape
unless it has achieved significant recognition because trademarks require a unique source of
identification. Conversely, design regulations prioritize protecting products' aesthetics and
stress the importance of maintaining confidentially prior to submitting an application to the
Designs office.
For instance:
You won't be able to protect every toy if a corporation produces a lot of them. Just because a
product's shape can be protected as a trademark does not mean that you will be registered as a
trademark. Since protecting the aesthetics of a given good is the purpose of design legislation,
all of them will in fact be protected by it.
Similarly, overlaps between trademarks and designs are seen frequently in various cases. The
overlap between design and trademark usually appears in respect of ‘shapes. The issue in
such cases arises during the establishment of protection against infringement.
According to the common law framework, a person has the right to pass off trademarks that
are not registered, even if section 22 of the Design Act of 2000 provides remedies for
infringement. This was determined in the SmithKline v. Hindustan Lever case.4
The court attempted to create an infringement test in the case of Whirlpool India v. Videocon
Industries Pvt Ltd, ruling that in order to protect the plaintiff in circumstances of design
infringement, the infringement must be determined only by visual inspection. 5 In a landmark
ruling in the well-known Crocs case, the Delhi High Court ruled that a registered design is
not a trademark.6
In Smit Kline v. Hindustan Lever, the courts applied the principle of passing off and
determined that it is a common law right, raising the question of whether a shape registered
under the Designs Act would lose its protection if it were used as a trademark for commercial
purposes. In contrast, the Delhi High Court rejected an injunction on the grounds of passing
off in the case of Tobu Enterprises v. Megha Enterprises. 7 This raises another crucial
question: is it possible for another registered design under the Design Act to file a lawsuit
alleging infringement against a registered design under the Design Act? According to the
ruling in the Mohan Lal case, a registered design innovator is not excluded from the

4
(2002) ILLJ 453 Bom
5
1-NMS 2269 OF 2012
6
903/2018 & IA 16586/2018
7
I.A. No. 1480 of 1983 in Suit No. 473 of 1983

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definition of "any person" under section 22 of the Designs Act, hence such a claim may be
maintained.8

3.1.2 Overlap between Copyright and design

Section 15 of the Copyright Act specifically addresses the problem of dual protection or
overlap between design and copyright. According to this section, a design registered under
the Designs Act of 2000 will not be protected by copyright. In essence, the owner of a design
must give up their rights under the Copyright Act once it is formally registered under the
Designs Act.
However, when a design is not registered under the Designs Act, there is a significant
dispute. The owner's design in the piece loses its copyright protection if it is replicated more
than fifty times using an industrial method. By defining the circumstances in which copyright
coexists with design protection and when it gives way depending on registration and
reproduction criteria, this clause clearly draws a contrast.9
The precedent set by section 15 of the Copyright Act was immediately applied in the later
case of Ritika Private Limited vs. Biba Apparels Private Ltd. 10 Ritu, the plaintiff, failed to
register her drawings and sketches under the Designs Act, and more than fifty copies of the
designs were made. As a result, the defendants denied her any protection from infringement
under the Designs Act and the Copyright Act. The importance of design registration and its
effect on the concurrent protection provided by copyright law were highlighted by this
application of the legal principle.
The plaintiff claimed that the drawings created for the purpose of creating clothing were his
artistic works protected under section 2(c)(i) of the Copyright Act, while the defendant
contended that clothing or drawings could not be considered artistic works and should be
registered under section 15(2) of the Copyright Act. The Delhi High Court addressed this
issue in the case of Rajesh Masrani v. Tahliani design because it addressed the overlap
between copyright and design protection. The court granted the plaintiff protection simply
because the copies were not reproduced fifty times.11
The topic of discussion is that, although copyright has long been regarded as an artist's
inherent right, in order to seek protection under the Designs Act, one must register it.
8
CS(OS) 384/2008
9
Overlap of Copyright and Design Rights," World Intellectual Property Organization (WIPO)
10
CS(OS) No.182/2011
11
FAO (OS) No.393/2008

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However, in more recent times, it has been noted that the courts are approaching these cases
with an objective, opposite approach.

3.1.3 Overlap between Trademark and copyright

There are no explicit restrictions or regulations in the statute pertaining to the simple overlap
between copyrights and trademarks. Anything that identifies a source will be a trademark;
anything creative may be protected by copyright.
For instance:
The best illustration of this overlap between trademarks and copyright is Starbucks coffee.
Starbucks' logo, which is an artistic representation of a mermaid crown, is protected by both
trademark and copyright. Starbucks has the right to file a lawsuit and make a claim against
any other firm that uses a mark that is very similar.
These kinds of overlaps are frequently observed in copyrights and trademarks, and they are
typically found on CDs, books, websites, and other materials. The printing of an image from
a novel may constitute copyright, and the image itself may be used as a trademark. Because
they offer distinct legal protections, such circumstances arise. Usually, the same product has
these overlaps. The product's logo often overlaps in this case since, if utilized for commercial
purposes, it can be used as a trademark but, if it's creative enough, it can also amount to
copyright.

4.1 Overlapping between Design’s Copyrights Law in Indian Perspective:

As a collection of privileges, intellectual property rights may include overlaps between the
liberties or rights granted to its owner on related subjects. This overlap is evident in the
sphere of applied expressions, where the Designs Law and the Intellectual Property
Regulation both apply to copyright. However, the specific laws in India that safeguard
copyright and designs, namely the Designs Act, 2000 ("the Designs Act") and the Copyright
Act, 1957 ("the Copyright Act"), do make an effort to distinguish between the rights granted
by the two Acts and the works that are protected by them.
Any creative work as defined in clause (c) of Section 2 of the Copyright Act is excluded from
the scope of a plan that may be enrolled under the Designs Act by Section 2(d) of the Act.
Furthermore, no copyright will remain in effect for any designs that have been enrolled under
the Designs Act, according to Section 15(1) of the Copyright Act. Subsection (2) of Section
15 of the Copyright Act states that the copyright in designs that have not been listed under the
Designs Act will expire if the owner of the copyright has applied the design to an article more

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than 50 times in a modern cycle. Therefore, the owner of such a plan will be deprived of all
freedoms under both Acts due to the fact that the plan was applied to more than fifty pieces of
articles and was not enrolled under the Plans Act.12
A few rulings from Indian courts have looked at the differences between the security
permitted by the two Acts. The Delhi High Court's ruling in Microfibers Inc. vs. Girdhar &
Co. sought to clarify the first creative works covered by the Copyright Act and the designs
that might be registered under the Designs Act.
In a nutshell, the current facts are that the Plaintiff was involved in the development of
upholstery materials and sued the Defendant for copyright infringement of the items' creative
works. The Plaintiff had no rights under either of the two demonstrations because the
Defendants determined that the alleged creative work was appropriate for enrollment as a
plan under the Designs Act, despite the fact that it had been reproduced several times and had
not been enrolled as such. A famous artwork will continue to be protected under the
Copyright Act as a creative work, the Division bench ruled in rejecting the Plaintiff's
copyright infringement claim.
“ In accordance with the provisions of the Designs Act, a design created from such a work of
art with the intention of modern application on an article to produce an article that has
highlights of shape, setup or example or decoration, or synthesis of lines or varieties and that
appeals to the eye would also be entitled to design security. Therefore, the design would lose
its copyright insurance under the Copyright Act but the original canvas would remain intact if
the plan were to be enrolled under the Designs Act. Since the edge of its application on an
article by a modern cycle is reached more than a few times, a design that is registrable under
the Designs Act but has not been enrolled will continue to be charged under the Acts'
copyright security. However, it would lose its copyright insurance under the Copyright Act
once that threshold is reached. We believe that this understanding would coordinate the
Designs Act and Copyright in accordance with the administrative goal. The Court went on to
clarify that the goal of both Acts was to provide lengthier security to creative works as
opposed to those meant for commercialization. ”

This Delhi High Court decision also laid the groundwork for the ruling in Ritika Private
Restricted v. Biba Apparels Private Limited, in which the Delhi High Court's Single
Appointed Authority exercised caution when applying Section 15(2) of the Copyright Act to
excuse the offended party's copyright infringement case. When the Court discovered that the

12
S. Sivakumar, “Overlapping Intellectual Property Rights: Issues and Solutions” (2007) 2(1) Journal of
Intellectual Property Rights 55-66.

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Respondent was producing garments utilizing a modern cycle that allowed for the
incorporation of drawings or sketches, it rejected the Offended Party's protected work in its
entirety and affixed it to the dresses. As a result, there was no indication of copyright
infringement. In a finding that includes an inquiry of the challenged work's security under the
Copyright Act and the Designs Act, the Bombay High Court determined that a "article" is not
the same as the "first imaginative work". The Court reaffirmed that, regardless of the format
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in which it is reproduced, the original creative work will continue to be charged out of
security under the Copyright Act. In any event, it will fall under the definition of a design
and, in the unlikely event that it is enrolled under the Designs Act, will be eligible for
protection for a shorter period of time the moment it is applied by a modern cycle to any
object, aside from the creative work itself in a few layered structures. However, in the
unlikely event that the plan has not been enrolled under the Designs Act, the copyright in
such a design will cease to exist after the 51st article of the plan has been copied, as per the
wisdom of Section 15(2) of the Copyright Act. "In any event, it would continue to enjoy full
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copyright under the Copyright Act as a unique creative work; however, it would overlook the
copyright security in its contemporary application for the creation of an article."
According to the Delhi High Court's 2017 decision, evaluating the essential clauses of the
Designs Act and the Copyright Act at the same time establishes that an article's design for
contemporary manufacture qualifies as a design registrable under the Designs Act. In any
event, if the design is not enlisted, the owner will lose the copyright to the design after
creating more than 50 of these things. The Court found that the Plaintiff in this instance had
structured the design drawings with the ultimate goal of developing ATL devices. In this
way, the ATL devices' drawings qualified as Designs Act registrable designs. In any event,
the Plaintiff lost the copyright to the design in accordance with Section 15(2) of the
Copyright Act since it had not registered its design and did not dispute that it had previously
manufactured over 50 ATL devices using a contemporary cycle.13

5.1 Conclusion
As technology advances daily, the scope and ensuing issues with resolving matters pertaining
to intellectual property rights grow. Better laws that thoroughly and clearly control the
concerns related to overlap are desperately needed, and the council must accompany them.
What is currently in place are just methods and viewpoints that the nation's courts have
13
Overlap between Design and Copyright Law: An Indian Perspective

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adopted to handle the covering. The legal executive is not responsible for determining their
direction through ambiguous regulations. It is fundamental that the assembly recognizes the
problems and resolves them.
The duplication of assurance provided by the IP freedoms sometimes leads to the emergence
of such covers. In the case of such covers, the court has two options: either it permits the
gatherings to enjoy security under two-act or more demonstrations, or it restricts the
gatherings to receive assurance under just one demonstration. In cases of infringement, the
court typically applies either the translation of the sculptures or, in the absence of regulations,
its own silent, small voice to the judgment.
The intersection of trademarks, designs, and copyrights highlights a convoluted legal
environment in which artistic creations may be simultaneously protected. It's critical to strike
a balance between trademark distinctiveness, copyright preservation, and design registration.
“ The interaction is best illustrated by Section 15 of the Copyright Act, which calls for
thorough evaluation of registration and reproduction considerations. Although trademarks can
protect shapes and patterns, consumer association is required to establish rights. As
demonstrated in pertinent examples, strategic registration and legal knowledge are essential.
All things considered, thorough protection requires a sophisticated grasp of various
intellectual property domains, highlighting the necessity of exact legal navigation in this
complex field. ”

5.2 References
Books:
 Lionel Bently and Brad Sherman, Intellectual Property Law (4th ed., Oxford
University Press, 2018).
 N.S. Gopalakrishnan and T.G. Agitha, Principles of Intellectual Property (2nd ed.,
Eastern Book Company, 2015).
 P. Narayanan, Intellectual Property Law (3rd ed., Eastern Law House, 2010).
Journal Articles:
 S. Sivakumar, “Overlapping Intellectual Property Rights: Issues and Solutions”
(2007) 2(1) Journal of Intellectual Property Rights 55-66.
 Shamnad Basheer, “Copyright and Industrial Designs: The Indian Experience” (2008)
4(3) Indian Journal of Intellectual Property Law 35-50.
Legislation:
 The Copyright Act, 1957 (India).

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  The Trade Marks Act, 1999 (India).
 The Designs Act, 2000 (India).
Case laws:
 SmithKline v. Hindustan Lever case (2002) ILLJ 453 Bom
 Whirlpool India v. Videocon Industries Pvt Ltd 1-NMS 2269 OF 2012
 Tobu Enterprises v. Megha Enterprises I.A. No. 1480 of 1983 in Suit No. 473 of 1983
 Rajesh Masrani v. Tahliani FAO (OS) No.393/2008
 Ritika Private Restricted v. Biba Apparels Private Limited CS(OS) No.182/2011
 Crocs Case 903/2018 & IA 16586/2018
 Mohanlal case CS(OS) 384/2008

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