Guest Post: One Work, Multiple Protections- Dilemma of IP

In his third entry to our SpicyIP Fellowship applicant series, Shashank Mangal looks into the dilemmas of what type of protection one ought to seek for a particular subject matter that may be eligible for multiple types of IP protection. He focuses on Copyright, Trademarks and Designs in this post. You can view his previous posts here.

One Work, Multiple Protections- Dilemma of IP

Can one form of IP be isolated from another? What if the subject matter is a copyrightable work as well as one eligible for being registered as a trademark or a design? Is it possible that I register under multiple legislations? If yes, then is it possible to pursue multiple remedies at the same time? And if no, then how should I make the decision of which type of IP protection to go for?

This post is a modest attempt at providing answers to the above questions, its scope being confined to Copyrights, Trademarks and Designs.

Most of us would be familiar with the ‘Kolkata Knightriders’ helmet logo. That is an artistic work under the Copyright Act, as well as a mark registrable as trademark under the Trademarks Act, 1999.

But is it also a design? No, as any artistic work as defined in clause (c) of section 2 of the Copyright Act or any trademark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 is excluded from the definition of design as provided under S.2 (d) of the Designs Act, 2000.

This means that in case of a copyrightable work which is not even required to be registered compulsorily, it shall not be eligible for registration as a design if it falls under the definition of artistic work in Copyright Act. So, does that mean that works other than artistic works in which copyright subsists as per section 13 can simultaneously be a design under Designs Act also? I think this has an answer in the negative due to the incongruity of the scope of other works in which copyright subsists and the definition of designs.

Moreover, the manner in which the definition of design has been drafted does not mean that only those designs which are registered as trademark cannot be registered as a design, rather, it says that mere eligibility of the shape to be a trademark strikes off the possibility of it being registered as a design.

One should also not get confused by the terminology of the Designs Act, like ‘copyright in designs’ as envisaged under section 9 of the Designs Act, as creating multiple IP rights under the Copyright Act and Designs Act because copyright has been defined separately in S. 2(c) of the Designs Act as ‘the exclusive right to apply a design to any class in which the design is registered’. Similarly, looking at S. 15 of the copyright act, it has been abundantly made clear that as soon as design gets registered under the Designs Act, no copyright as contemplated by the Copyright Act, 1957 shall exist in that design.

The argument that designs and trademarks can exist simultaneously in one article because Trade and Merchandise Act, 1958 has been repealed, and succeeded by the Trade Marks Act, 1999, would not stand. It is because section 8 of the General Clauses Act and the application of ‘doctrine of incorporation by reference’ when the statue incorporated gets repealed and re-enacted, would intervene to treat ‘Trade and Merchandise Act, 1958’ as mentioned in the definition of designs as ‘Trade Marks Act, 1999’.

So, now the scope of this post gets narrowed down to concurrent existence of Copyright and Trademarks. Continuing the above example of KKR, the logo may be qualified for protection under copyright act being an artistic work. Similarly it may be qualified for protection under Trademarks Act as the definition of trademarks under S. 2(zb) relies on the definition of ‘mark’, which being an illustrative definition does not rule out the possibility of including this logo as a mark. Now, there can be two situations;

(a) That the author wants to get the logo registered as a trademark. In this case, there is no statutory provision barring this. But in some cases, there lies a bar to the registration of trademark when its use is liable to be prevented by virtue of law of copyright [S.11(3)(b), Trade Marks Act, 1999]. Illustration- ‘A’ only has a copyright in ‘Z’, but Z is a subject matter of both trademark and copyright. ‘B’ applies for a trademark in ‘Z’, the trademark registry can refuse the registration.

(b) That the author wants to get the logo registered (though not compulsory) as a copyright.

As per the proviso to S. 45 of the Copyright Act, the author can get it registered upon submitting a statement with the main application that the work is capable of being used as a trademark also. Moreover, he is also required to attach a certificate from Registrar of Trade Marks, to the effect that no trademark identical or deceptively similar to such artistic work has been registered under that Act for such registration by, any other person other than the applicant.

This very clearly means, that the law explicitly allows a person to register his work both as trademark and copyright at the same time and also safeguards him against any prospective infringement by way of the requirement of certificate from Trade Mark Registry as mentioned above.

Finally, it’s interesting to see what considerations affect the selection of remedies by the plaintiff in the event of happening of an act which constitutes both, trademark and copyright infringement. A previous post here //spicyip.com/2013/12/jurisdiction-in-a-composite-suit-a-case-study.html) explained the proper court which would have jurisdiction in such a case.