This Article is written by Suhasini Kapoor (7th Semester in BBA LLB from Faculty of Law, Banasthali Vidyapith, Rajasthan)
Table of Contents
With the ever-increasing industrialization, things have come a long way. It can be said that with the evolution of e-commerce and conducting businesses online, the need for preventing the misuse of intellectual property has grown.
In terms of jewellery, jewellery is sold through online platforms today. The competition in such a case increases with higher chances of designs being duplicated and being copied. Though e-commerce helps the business to penetrate into society and have a far-reaching effect, yet easy availability and viewership of ornaments on their respective websites, make the owner of such designs more vulnerable, fearing that there are great chances of the designs being copied.
The foremost question that thus remains is whether there are ways to protect the coping of jewellery designs and prevent infringement of the owner’s rights?
ARE ORNAMENTS CAPABLE OF BEING REGISTERED AS TRADEMARKS?
Essentially, jewellery itself is not capable of being trademarked as it is the offering itself. However, the jewellery brand can obtain a trademark for its line. It can register as a trademark the name, slogan, logo or anything capable of being graphically represented that the business uses to place its products in the market or rather promote them.
In such times of cut-throat competition, where companies are thriving to stay in the industry, particularly for the jewellery line it is quite easy for any competitor to hijack the other competitor’s product design and sell it as his own. It, therefore, becomes important to trademark the business’s name or logo so that it could develop a brand identity and consumer loyalty. This would help the consumers distinguish the brand’s products with lesser chances of them being confused ultimately.
It can, therefore, be observed that a trademark, in this case, does not protect the constitution or the jewellery itself, it is however capable of protecting the brand or the marketing and promotional aspects of the same.
Plaintiff, Crocs Inc. USA, brought a suit against Aqualite India Ltd. and others. It was held in this case that a registered design cannot obtain a trademark in light of the intent of the Designs Act, 2000. Moreover, protection under design is for a limited period of time and that if the registration of designs is allowed to be trademarked then the option shall widely be misused for protecting the design perpetually.
So, if trademarks do not protect jewellery/designs, then what does? Can jewellery actually be protected?
HOW CAN JEWELLERY BE PROTECTED?
There are ways to protect jewellery. A business can either trademark its trade dress or any feature which is so distinctive that the public can make out the product’s origin by just having a look at it.
Jewellery can not only be protected under the Copyright Act, 1957 but also as a design under the Designs Act, 2000.
WHICH OUGHT TO BE SOUGHT – COPYRIGHT OR DESIGNS?
As read earlier, the law of Copyrights and Designs is capable of protecting the intellectual property of jewellery. The law of design aims at protecting the interests of artists in the world. This brings us to the thought that the two streams must coincide with each other, however, the two seem to have noteworthy differences.
- In this regard, copyrights extend their scope only to the sketches of designs considering them as artworks, while designs actually aim to protect the entire finished look and the pattern of an individual product/articles or a group of them.
- Copyright protection is granted for a period of 60 years. In the case of original works/entries, the period of 60 years starts upon the death of the designer/author. Whereas design is protected for a period of 10 years only, which is however capable of being renewed or getting an extension for another period of 5 years.
- Where copyright can still be protected without being registered, a design cannot be protected until and unless it is registered.
In this case, it becomes confusing as to whether jewellery should be protected as a copyright or a design. The Copyright Act, 1957 as a result to prevent its misuse or dual protection, provides that if any work is registered as a design it cannot be registered as copyright under the Act. Section 15 (1) of the Act states that once a work is registered as a design, the owner shall no more be entitled to protect the work as copyright. According to section 15 (2) of the Copyright Act, 1957, a registered copyrighted design shall also cease to have protection as copyright when more than 50 such copies of the work to which the design is applied, are reproduced by an industrial process.
Copyright can thus be obtained if not more than 50 of such pieces are to be reproduced by an industrial process. In the American case of Kieselstein-Cord v. Accessories by Pearls, Inc it was held that jewellery is not functional and is decorative in nature. It does not cover one’s body and in a way is quite like miniature sculptures in nature and therefore such art can be copyrighted.
However, in respect of jewellery, it is more logical and practical to register the work as a design under the Designs Act, 2000, if more than 50 such copies of the ornament are ought to be sold. This is because if not registered as a design in the above-stated case, in a situation where competitors have duplicated or imitated the design, protection cannot be sought.
HOW TO SEEK REGISTRATION FOR JEWELLERY DESIGNS?
The process of registering jewellery as designs are quite simple. All that has to be done is that an application is to be filed at the Designs Office. It must contain the photograph of the design and the class it is applied under which is class 11-01 in respect to jewellery.
The Office shall then evaluate all the applications they have so received if all the requisites so mentioned are complied with and that there are no objections in respect of the application, the design so filled for shall be registered and published in the Designs Journal.
Where an application does not meet the necessary requirements and raises objections, an examination report shall be issued in such a case, following which a hearing may also be conducted. In general, it takes about 6-10 months for obtaining the registration of a design.
In respect of foreign applications, priority applications can be claimed from the convention application nations provided that the design application must be filed within six months in India, from the priority date. India being a signatory to the Paris Convention, can thus entertain all such applications from countries upon whom the Paris Convention applies.
AMBIT OF DESIGN RESIGTRATION
The Designs Act, 2000, and the Designs Rules of 2001, amended in 2008, aimed at registering and protecting the aesthetics of any finished product. The definition for “Design” has been provided for in Section 2 (d) of the Act. Design as per the section can comprise of shape highlights, pattern, configuration, ornament, decoration, or synthesis of lines or hues applied to any article by any industrial procedure. The article can either be a two-dimensional or three-dimensional article and ought to be fit for being made and sold independently.
A design shall however not incorporate any sort of construction or something which in substance is a mechanical device, a trademark, a property mark, or an artistic work.
It, therefore, protects only designs/articles possessing aesthetic value and not functional value.
WHO CAN SEEK REGISTRATION OF A DESIGN?
Section 5 of the Act states that anybody who claims to be the proprietor or deems to have invented an original design can apply for design and claim protection under the Act. Section 2(j) of the Act further defines who a proprietor is. A proprietor under the Act is anyone for whom the author has brought into existence the design in return for some consideration or someone upon whom the right of design or its application is conferred or someone who is the original author of the design.
REQUISITES FOR REGISTERING JEWELLERY DESIGNS
Requisites for registering jewellery designs like that for registering any other design. The design must be new, unique, and original. It must be solely judged upon its appeal to the eye and that the unique features/attributes for which protection is sought must be visible and evident. It should not be disclosed to anybody, situated anywhere by its prior publication, use, or in any which ways. They must be able to be differentiated from other registered or already existing/in use designs. The Designs must not incorporate any obscene or scandalous matter. Designs must be applied to articles that are going to be reproduced by an industrial process. No functional feature must be attributed to design protection.
The application should be made through Form-1 and should contain the class in which protection is to be sought, which in this case of jewellery design is Class 11-01. A representation sheet containing the photograph, sketch, or diagram representing the novel design for which protection is sought, must also be attached. A Power Of Attorney is also to be submitted along with the above stated.
PROTECTION OF JEWELLERY DESIGNS
On meeting the above-stated requirements, the Patents Office grants registration to the design. Upon registration, copyright is granted over the design for a period of 10 years, which can be extended for a term of another 5 years.
Section 22 of the Act talks about the illegality of articles reproduced by piracy and the legal proceedings that could be initiated for the protection of a registered design, in case of the same. According to the Section, it is unlawful for anyone, to apply the design itself or for any sort of fraudulent imitation to any article without a valid license or authorization from the proprietor, for the purposes of sale. It also states the same as unlawful in case of importing such articles or publishing them for sale to the public.
Any interested person can request cancellation of the registration of the design at the Controller’s office as per Section 19 of the Act. The grounds must be those as mentioned in Section 19 (1) of the Act which may either be a lack of originality of the design, or that the design has previously been registered or has been published in India or some other nation before the date of registration. If the design is not capable of being registered under the Act or does not come under the definition of design as mentioned in Section 2(d), an opposition process can be initiated in this case too.
IMPORTANCE OF REGISTERING DESIGNS
It becomes imperative to register designs to claim exclusive rights over the design which shall prevent others from using it. This plays a really important role, particularly in the case of jewellery as customers tend to buy and judge the product through the aesthetic attributes in terms of design, shape, colour combination, ornamentation, etc. Customers in a way associate particular brands or maybe the standard of quality to design.
Talking about jewellery particularly, companies manufacturing imitation jewellery try to duplicate and copy the feel and look of the in-trend ornaments, to gain market share. It is thus best to register a design, in order to differentiate a company’s design from that of the competitor’s.
Intellectual Property Laws aim to protect the creation of the human mind. In recent times, huge attention has been drawn towards innovative, inventive and branding sector disputes in terms of disputes through Trademark or Patents, it must, however, be noticed that work of art is be protected too, as per the Intellectual Property laws of India, be it in whichever form – either Copyrights or Designs.
However, these laws are so deeply intertwined that they tend to overlap each other. Jewellery Designs particular face such issues as to whether they should be registered as designs or copyrights or as trademarks. The above discussed were a few problems that generally arise while a proprietor seeks to protect his designs.
489 F. Supp. 732 (S.D.N.Y. 1980)