The Overlap Between Copyright and Designs in India, EU and the UK – A Case for Overhaul of the Indian Legal Framework

November 2022

Abstract

The primary beneficiaries of design protection are both short-lived fancy articles (such as toys, furniture, fashion designs, mock jewellery etc.) and longer-life articles (such as automobiles, designer watches, electronic products etc.). Since design protection is dependent on prior registration, only producers of articles with a longer shelf-life find commercial and legal sense in undergoing the rigours and expenses of such registration. On the other hand, there is no similar commercial imperative for short-term articles, given their myriad forms as ephemeral as the changing public tastes, fads and conventions.

Authors

Latha Nair

Counsel , K & S Partners, India

Rajendra is one of the founding members of the law-firm, K&S Partners. He has an extensive experience of nearly 38 years in handling all aspects of prosecution and enforcement of trade marks, copyright and geographical indications. His expertise extends to the handling of TRIPS related issues, protection of copyright in the digital context, domain name disputes and intellectual property aspects of the entertainment industry and the Internet.He is now leading the firm's new practice in the area of 'Privacy & Data Protection'. RK assisted the Government of India in preparing the first draft of the Geographical Indication of Goods (Registration and Protection) Act, 1999 in consultation with the World Intellectual Property Organization (WIPO). In 2005, Rajendra Kumar, co-authored a seminal work on geographical indications titled, “Geographical Indications: A Search for Identity”, published by Lexis Nexis Butterworths. Rajendra regularly appears before the IP Offices, various District and High Courts as well as the Supreme Court of India. He successfully argued before the High Court of Delhi in two of India's land-mark cases, Microfibres v Girdhar on the overlap between designs and copyright and Super Cassettes v Myspace on the availability of safe-harbour provisions to an intermediary in a claim for copyright infringement.

Amit Sindhwani

Head of IPR, Usha International, India

Amit Sindhwani is a Law graduate from the University of Delhi. As an independent IP Attorney prior to his current in-house position, he had been handling IP matters at all level levels of the judiciary as well as before other authorities involved in customs recordations, opposition/cancellation actions before before the Trade Marks Registry and Appellate Courts, domain name disputes and other cross-border matters including criminal enforcement by way of search and seizure operations . Over the years, he has been involved in several high profile and path breaking cases in the field of trademark, copyright, design, patents and anti-counterfeiting actions. At present, he is working as HEAD (IPR) with the Shriram group of companies, mainly comprising of Usha International Ltd., Mawana Foods Ltd and Mawana Sugars Ltd. Shriram group is a diversified conglomerate with the business spread in the areas of consumer durable such as fans, sewing machine, appliances, edible oils, sugars etc., owning the well-known and reputed brands like USHA, MAWANA, etc. As IP Head, he has had the privilege of filing and prosecuting of trade mark applications in more than 120 countries across the globe and enforcing the rights by way of diverse oppositions/cancellations and court actions in various Middle East and South Asian countries. He has 20 years of rich experience in the field of IP starting from conceptualization, prosecution of IP, included but not limited to strategizing complex IPR litigation.

Companies

K & S Partners

K&S Partners is an Intellectual Property boutique. Founded in 1994 as a three-member team, the firm today has over 130 professionals and an overall strength of over 280. It has offices at Gurgaon, Bangalore, Mumbai, Chennai and Hyderabad. The firm's client-focused teams advise on the IP interests of national and international organisations including Fortune 500 companies, as well as manage their IP portfolios. These teams, supervised by partners, work seamlessly and in coordination with a focus on quality, ethics and promptness. Besides serving clients, the firm is recognized for its contributions to policy making and actively participating and contributing to drafting legislation in various areas of Intellectual Property rights. K&S Partners also assists clients in obtaining and enforcing Intellectual Property rights in India's neighbouring countries such as Bangladesh, Sri Lanka, Bhutan, Myanmar, Nepal and Pakistan through a network of associates in these countries. The firm also has one of the largest portfolios of foreign patent filings for Indian clients in foreign countries including the United States Patent and Trademark Office, European Patent Office and Japanese Patent Office. In connection with its international representation of its clients' IP assets, it has developed strong ties with associate firms in several countries, including India’s neighbouring countries. The firm has been instrumental in setting precedents in some pathbreaking areas of IP.

Usha International

Usha International Ltd. an Indian multinational manufacturer and marketer of Home Appliances and other consumer durable products that include sewing machines, electric fans, electrical and household appliances, water coolers, juicer mixer grinders, electric Irons, toasters and Inverters etc. These products are sold under the renowned and well-known mark USHA which was adopted in the year 1936. The company headquartered in Gurgaon, Haryana is part of the Sidharth Shriram Group and is today amongst Indiaâ€™s most dynamic and reputed business houses since 1934. The Company has an annual revenue of Indian Rupees 3000 crores with 5000 employees working from 16 regional office, head offices, manufacturing plants in Kolkata and Hyderabad and overseas offices in China and Sri Lanka. The Company has a All-India retail presence with 60 company showrooms and logistics supported by 33 warehouses. The International operations of the Company started in the year 1946 and at present the company is exporting its products to 32 countries of the world. International Tie -ups Currently, the Company has an association with Hunter Fan Company, USA, Janome Sewing Machine Company, Japan, Midea Appliances, China.