INTRODUCTION:

The four statutes covering the four concepts under Intellectual Property Law are:

i. The Patents Act, 1970

ii. The Copyright Act, 1957

iii. The Trade Marks Act, 1999

iv. The Designs Act, 2000

The instant write up analyses the confusion that existsbetween Trade Mark and Design. The analysis is based on the provisions of the existing statutes and precedents laid down regarding the same.

DEFINITIONS:

Trade Mark has been defined under Section 2 (1) (zb) of the Trade Marks Act, 1999 as a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of colour.

Design has been defined under 2 (d) of the Designs Act, 2000as only the features of shape, configuration, pattern, ornament or composition of lines or colours 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 Designs Act, 2000 specifically excludes trade mark in its definition itself. However, there is no such bar under the Trade Marks Act, 1999. As per the same, if any feature is being used as a trade mark, the same cannot be registered as a design but can subsist as the trade mark. In light of the same, it is clear that the same features of an article cannot be registered as both, designs and trade marks.

DISTINCTION:

1. PURPOSE - As per the analysis of the definitions of both, trade mark and design, it is clear that the purpose of both the concepts are entirely different. As per the definition, one of features of the trade mark is that it is“capable of distinguishing the goods or services of one person from those of others” which means that trade mark is a source identifier whereas one of the features of design is that “it appeals to and is judged solely by the eye” which means that it is for increasing the appeal of an article through its appearance.

2. DURATION – As per the Section 11 of the Designs Act, the registered proprietor of design holds a monopoly on the same for ten years, extendable to further 5 years, i.e. a total of 15 years. After the completion of the 15 years, the design falls in public domain and can be exploited by the public without anyone having monopoly over the same.

As per the Section 25 of the Trade Marks Act, 1999, the registered proprietor can get the protection over the trade mark for ten years and the same can be repeatedly renewed for the ten years, before completion of the term leaving the exclusive right to own the trade mark with registered proprietor in perpetuity.

OVERLAP BETWEEN DESIGN & TRADE MARK:

The statutes have made it clear that a design and trade mark cannot be registered simultaneously for the same features of an article.

Whereas design registration protects a feature as a design under the statute, the same denies the right of the feature to be recognised as a trade mark alongside under section 2(d) of the Designs Act, 2000. In view of the same, the question arises if the same can be protected as an unregistered trade mark under the Common Law.

As per Section 27 (2) of the Trade Marks Act, 1999, a prior user of an unregistered trade mark can initiate legal proceedings against another person if the latter is passing off his goods/ services as good/ services of the former. Section 27 protects the right of a prior user of an unregistered trade mark.

PRECEDENTS:

1. Mohan Lal v. Sona Paint & Hardwares(AIR2013Delhi143):

The instant judgment by the High Court of Delhi dealt with the issue of dual protection on a feature/ article as both a design under the Designs Act, 2000 as well a trade mark under the Trade Marks Act, 1999. It was observed that the same matter cannot be registered as both, design and a trade mark. However, the same can be used as a trade mark and hence protected under the law of passing off laid under Section 27 under the Trade Marks Act, 1999 after the same is registered as a design under the Designs Act, 2000.

In the instant case, the High Court of Delhi relied on McCarthy on Trademark and Unfair competition while observing that Dual protection from both design patent and trademark law may exist where it is alleged that the configuration or shape of a container or article serves to identify and distinguish the source of goods - that is, acts as a trademark or trade dress.

Therefore, having regard to the definition of a design under Section 2(d) of the Designs Act, it may not be possible to register simultaneously the same matter as a design and a trade mark. However, post registration under Section 11 of the Designs Act, there can be no limitation on its use as a trademark by the registrant of the design. The reason being: the use of a registered design as a trade mark is not provided as a ground for its cancellation under Section 19 of the Designs Act.

2. Carlsberg Breweries A/S. vs. Som Distilleries and Breweries Ltd. (AIR 2019 Delhi 23)

The High Court of Delhi observed that “this court is also of the opinion that the Full Bench ruling in Mohan Lal (supra) made an observation, which is inaccurate: it firstly correctly noted that registration as a design is not possible, of a trade mark; it, however later noted that "post registration under Section 11 of the Designs Act, there can be no limitation on its use as a trademark by the registrant of the design. The reason being: the use of a registered design as a trade mark, is not provided as a ground for its cancellation under Section 19 of the Designs Act." This observation ignores that the Designs Act, Section 19 (e) specifically exposes a registered design to cancellation when "(e) it is not a design as defined under clause (d) of section 2." The reason for this is that Section 2 of the Designs Act, defines "design" as "…the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article…….; but 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….." Therefore, if the registered design per se is used as a trade mark, it apparently can be cancelled. The larger legal formulation in Mohan Lal (supra), that a passing off action i.e. one which is not limited or restricted to trademark use alone, but the overall get up or "trade dress" however, is correct; as long as the elements of the design are not used as a trademark, but a larger trade dress get up, presentation of the product through its packaging and so on, given that a "passing off" claim can include but is also broader than infringement of a trademark, the cause of action against such use lies”.

The instant judgment shifted the view a bit from the preceding judgment of Mohan Lal v. Sona Pain & Hardwares stating that the relief of passing off can only be claimed on those elements of the trade dress which are not recognised as a design in a composite suit of passing off of trade mark and infringement of designs.

3. Super Smelters Limited and Ors. Vs. Respondent: SRMB Srijan Private Limited (2020(81)PTC101(Cal))

A very recent judgment by the Calcutta High Court deals with the question that whether protection can be granted for a product as a trade mark after the expiration/ cancellation of Design Registration that subsisted in the same.

The High Court of Calcutta, in the instant matter, denied the observation made by Manmohan, J. in the matter of Mohan Lal v. Sona Paint & Hardwares wherein it was said that after the Design has expired and the monopoly has been enjoyed over the same for 15 years as granted under the statute, the same cannot be applied as a trade mark in order to continue to enjoy the monopoly over the product. The High Court of Calcutta observed that after a design has expired/ cancelled, the same is open to be recognised as a trade mark if it has become an identifier of the source of the product as the monopoly is not granted but merely recognising the monopoly that already existed.

The High Court stated that “The position of Manmohan Singh, J. presupposes that an article by ipso facto becoming a design cannot become a trade mark after it stops being a design because the aim of a design registration is to grant a monopoly for a limited period and not after that. But the fatal flaw with this presupposition is that rather than granting monopolies to the shape of an article, the law of passing off merely recognises the existence of a monopoly over that shape that is held by the proprietor. So, the monopoly of a design, after it comes to an end, is not, ceteris paribus, converted into the monopoly of a trade mark but only recognised as one. What Manmohan Singh, J.'s opinion does not account for is the fact that a registered design, after its expiry, may not lose its distinctiveness and end up fulfilling all the requirements of a trade mark. In that scenario, not recognising that mark as a trade mark because that would extend the design monopoly would be to conflate two things that exist completely independent of each other. If a person is able to demonstrate that his mark has attained all the requirements of trade mark in a passing off action, then to deny him the protection that the law entitles him simply because priorly the said mark was a design would defeat the purpose of trade mark law and extend not the purpose of designs law. The fear enunciated by Manmohan Singh, J. that designs will not go to the public domain as they ought to post expiry of design registration if they are recognised as trade marksmay be addressed by simply pointing out that such monopolisation is restricted by the standards required to be satisfied for the recognition of a trade mark itself.”

CONCLUSION:

From the above discussion, it can be concluded that design is a new or original matter and the same is protected for its appearance whereas a trade mark is protected as a source identifier of the product.

A matter can be either registered as a design or as a trade mark. Dual protection under the respective statutes, the Design Act, 2000 & the Trade Marks Act, 1999 cannot be granted. If a matter has been applied for design registration, applying the same for trade mark will leave the design application at the risk of abandonment/ cancellation.

However, the entire trade dress consisting of both, the designs and trade marks, can be protected against another party by filing a composite suit for infringement of design registration (Section 22 of the Designs Act, 2000) and a passing off (Section 27 (2) of Trade Marks Act, 1999). No element on the product can be both design and a trade mark in order to file the suit.

Further, after the expiration/ cancellation of a design registration, the same can be applied to be recognised as a trade mark if the same has become an identifier of source of the product which is the main ingredient of a trade mark.