Copyright Design Overlaps in IP Patent Trademark

Overlapping Intellectual Property Rights

The inimitable IPKat has been very kind to SpicyIP in a recent post, where they noted:

“…this Kat notes with pleasure that one of INTA’s media sponsors this year is Spicy IP, a blog which has not merely placed India firmly on the map so far as IP blogging is concerned, but has provided an invaluable source of information, ideas and critical comment at an impressively high level.  It’s only a few years ago since blogs were still regarded with suspicion, dislike and often contempt — but blogs like Spicy IP are definitely a force for good and this Kat applauds its blog team collectively and individually for all its hard work.”

A big thank you to the most well known IP feline. And given that the largest of them (tiger tiger burning bright..) happens to be our national animal, they have a special place in our heart. Though it must be said that we are only doing a cross media partnership with INTA and not “sponsoring” them in any way (though we’d like to someday, once we have money in our coffers).

The post below also speaks about the presence of one of the most distinguished members of the feline family at the INTA (national) event in Hong Kong, namely Neil Wilkof.

overlap larger

Where IP rights overlap.  Another distinguished IP personality in town is lawyer, scholar, fellow Kat and guru’s guru Neil Wilkof, who is also putting in an appearance at the Oxford University Press exhibit booth. He’s not actually launching anything but he’ll be there from 12 pm to 1 pm so you can discuss with him the topic on which he has teamed up with Katfriend and Indian legal scholar Shamnad Basheer to edit an OUP tome — Overlapping Intellectual Property Rights (book here).  There may still be a copy of two of Neil and Shamnad’s book by then, if they have not already been snapped up by discerning shoppers.”

For those interested, our book on overlaps has both a Global edition, and a lower priced Indian edition (for sale only in India and South Asian countries). The latter edition has an exclusive chapter on India outlining the key cases around Indian IP overlaps, including the controversial Micolube decision. When the chapter was written, the Micolube decision had not yet issued. I’d argued in the chapter that dual protection (under designs law and then passing off) is not automatically precluded under the statute; however the moment a plaintiff argues for protection under both heads (that the subject matter is both design protected and has acquired a trademark significance), there is a glaring inconsistency. For under the terms of the Designs Act (section 2), one cannot have a valid design, once that design has begun functioning as a trademark. I extract the portion of the chapter dealing with this:

“Section 2 of the Designs Act excludes ‘trademarks’ from the purview of design protection….therefore, only shapes that are not inherently distinctive might be registered as designs, but protection could be ousted as soon as they begin functioning as trademarks or source indicators. In other words, the moment a trademark covering the shape is registered or a successful passing off action based primarily on the shape of the product is maintainable, the design registration necessarily has to fall.

If this logic holds good, the Micolube case could be disposed of on this ground alone; the fact that the plaintiff alleges a passing off action is effectively an admission that the claimed subject matter has begun performing a source identifying trademark function..”

Sadly, the three judge bench of the Delhi High Court did not consider this angle. I believe the parties lost out on excellent opportunity to appeal this interesting issue to the Supreme Court of India.

I’ve just posted a draft version of this India chapter on SSRN. For those interested, it is available for free download from this link. The linked version also contains a thoughtful foreword from the inimitable Justice Sridevan (who recently retired from the IPAB). 

Also V Lakshmikumaran, founding partner of Lakshmikumaran and Sridharan, and one of the sharpest witted Indian IP attorneys around town, reviewed our book in the Indian Journal of Law and Technology. Here is the link.

The overlap table on India was done by the wonderful duo of Rajendra Kumar and Latha Nair of K&S Partners, a leading IP law firm.

As always, comments and critique welcome. 

And lastly, let me take the liberty of sharing the kind words of Dr Francis Gurry (who effectively resuscitated WIPO from its checkered and dare I say, corrupt past and was recently re-elected to a 6 years term) on the book:

“I write with much delay, for which I apologize, to thank you for sending me a copy of your work, Overlapping Intellectual Property Rights.  It is a great work, which manifests your scholarship and profound knowledge of IP.  It is a vexed area and your contribution will, I hope, stimulate thought and action on the part of policy-makers.”

Shamnad Basheer

Prof. (Dr.) Shamnad Basheer founded SpicyIP in 2005. He's also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof. Amartya Sen. Professional History: After graduating from the NLS, Bangalore Prof. Basheer joined Anand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Later, he was the Honorary Research Chair of IP Law at Nirma University and also a visiting professor of law at the National Law School (NLS), Bangalore. Prof. Basheer has published widely and his articles have won awards, including those instituted by ATRIP, the Stanford Technology Law Review and CREATe. He was consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also served on several government committees.

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