Our Associate, Nikita Lakhani discusses “Jewellery and Intellectual Property: A Conflict Between Copyright, Designs and Trademarks“
The problem with jewellery designs being easily replicated or copied has translated into a growing need for intellectual property protection of such designs.
Here, it is pertinent to understand the difference between an artistic work under copyright law and a design under the Designs Act, 2000. Section 2(c) of the Copyright Act, 1957 (“Copyright Act”) defines an ‘artistic work’ as including, among other things, a drawing and any work of artistic craftmanship. Section 2(d) of the Designs Act, 2000 (“Designs Act”) defines ‘design’ as ‘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.’ It is pertinent to note that ‘design’ excludes any artistic work as defined in the Copyright Act.
IP law does provide for protection of jewellery designs through both the Copyright Act and the Designs Act with a few differences. The Copyright Act protects sketches of a design, whereas the Designs Act protects the representation and pattern of article or articles. However, the Copyright Act states that if a work can be registered as a design under the Designs Act, then it cannot be granted protection under the Copyright Act. Furthermore, the Copyright Act states that if a design eligible for protection under Designs Act has not been registered, then if the product with the design is made more than 50 times the copyright protection ceases.
In Pranda Jewelery v. Aarya 24k, the issue of copyright infringement in case of gold sheet articles of deities and religious symbols was examined. The Bombay High Court held that the drawings, as well as, its reproduction in gold plate three dimensional form could be granted protection under the Copyright Act. The reason being that something that is being produced is an ‘artistic work’ itself. Further, the Hon’ble Court stated that the plaintiffs hold a copyright in the reproduction of drawings in the form of gold plates. It was further explained that even if they are designs, and not artistic works, it has not been shown that there are fifty applications.
However, in case of Ritika Private Limited v Biba Apparels, a piece of clothing which was reproduced fifty times was not considered to be eligible for protection as it was reproduced through an industrial process. Jewellery could also be granted protection as a shape mark in India. In order to be protected as a shape mark, the owner must demonstrate that the shape is not necessary to obtain a technical result. However, in case of three-dimensional marks, the fine line between a shape mark and design law begins to blur.
Ultimately, it appears that there could not be one straightforward answer when it comes to IP protection of jewellery. However, a jewellery designer must consider the number of articles to be manufactured or sold and the publication must be made only in an event the designer does not wish to register the jewellery under Designs Act as it cannot fall into public domain before its registration.