Riding down India’s design law highway
C.A. Brijesh and Sakshi Sharma of Remfry & Sagar examine the law on designs in India, detailing the requirements for design protection and assessing the overlap between this form of protection and copyright and trademark law
The launch of the Cybertruck by Tesla certainly served as food for thought - while for Gen Z it was a new template for a meme, intellectual property lawyers were busy debating how the vehicle, with its unusual design and features, could claim protection available under various IP laws.
The automotive industry values intellectual property dearly as protecting proprietary rights in automobiles encompasses nearly all aspects of intellectual property – the engines and functional parts are covered by patent law, the external body and features (barring everything under the hood) may be protected as designs, the protection of the brand and its logo are covered by trademark laws and drawings qualify for copyright protection. The focus of this article, however, is specifically on the application of design laws (and copyright in industrial designs) to automobiles.
For your eyes only
A design or design patent is a form of intellectual property that is judged solely on the basis of appeal to the eye. To elaborate, a utility patent is usually available for functional aspects of an automobile (such as, a new and non-obvious air-conditioning system), while a design patent is available for its ornamental features (such as the look of the automobile not dictated by functional features or the design of its grill). The purpose of obtaining a design registration is to protect novel shapes/configurations/designs devised to be applied to articles that are manufactured and marketed commercially and the design in question may be a two or three dimensional representation of a particular feature. In the case of automobiles, designs (as a feature) have evolved significantly from the wooden frame cars of the 19th century to cars made entirely of steel in the 1920s to the recent Cybertruck. Some famous automobile designs that have been registered in the past include steering wheels of cars, rear-view mirrors, protective coverings and even the whole car/automobile itself.
Design law places immense importance on ocular impression and whether an instructed eye is able to draw a distinction between a new design and an existing version of a product – in other words, to qualify for protection as a design, a product (or its feature/s) must satisfy the test of novelty and originality. To claim novelty and originality in India, a design must be either new or original i.e. the shape/pattern must be wholly new or if it is old, its application to a particular subject matter is new, hence making it original. Further, an instructed eye is one that is able to discern what is common trade knowledge or examine novelty that is so striking and substantial that it merits registration.
Legal raison d'etre
It is the nature of the automobile industry that the look of different models is updated from time to time – mostly for a new aesthetic – which makes the protection of novel designs in this domain significant. Protection for automobiles under design laws is near ubiquitous – it is available under the national legislations of most jurisdictions. Additionally, the Hague Agreement Concerning the International Registration of Industrial Designs allows industrial designs to be protected in multiple countries or regions with minimal formalities. Presently, India is not a signatory to the Hague Agreement. However, India is a member of the Paris Convention and hence, priority can be claimed from a convention application if the design application in India is filed within six months of the priority date of an application filed in any country or group of countries or member of inter-governmental organisations to which the Paris Convention applies. The same is also recognised in the Designs Act in India.
The aesthetics of any article or product of manufacture, including automobiles and their parts/features are protected and registered in India under the Designs Act 2000 and Designs Rules 2001, as amended in 2008. A design is feature of shape, configuration, pattern, ornament or composition of lines or colours applied to any article by any industrial process or means. The said design must be new or original; it can be two-dimensional or three-dimensional and should be capable of being made and sold separately. Also, the design of the finished article should appeal to and be judged solely by the eye. Any mode or principle of construction of a mere mechanical device and any trademark or artistic work is excluded from protection as a design. Thus, the statute provides protection only for designs that have novelty, are aesthetic in nature, are applied to articles, and are not dictated by a functional feature.
Though cases in India concerning the protection of designs vis-à-vis cars/automobiles as a whole are hard to identify, we do have judgments relating to designs re components of cars. In B. Chawla v Bright Auto Industries, Bright Auto Industries – engaged in the manufacture and sale of rear-view mirrors – filed for cancellation of the appellant's designs on the basis of lack of originality. The question before the court was whether addition of a further curve on any side of the rearview mirror made the variation striking enough or substantial enough to constitute novelty for registration of the design. It was finally held that the design was a mere trade variant as the innovation claimed was too insignificant to qualify as a novel/original design. Additionally, in the case of Apollo Tyres Ltd. v Pioneer Trading Corporation & Ors. the alternate remedy of passing off under common law was claimed and reliance was placed on trademark rights over the tread pattern of tyres. The court, while dealing with whether tyre grooves/treads were functional in nature, concluded that since the same functionality could be achieved by other means, the defendant was guilty of passing off its tyre tread as that of the plaintiff's.
Incidentally, the remedy for passing off for designs is not statutorily recognised but there are judicial precedents providing the same. To illustrate, in a landmark judgment – Carlsberg v Som Distilleries – a five judge bench of the Delhi High Court dealt with the concept of design infringement and passing off in beer bottles. The court held that owing to common questions of law and fact between the causes of action of infringement of registered designs and passing off, the two suits could be combined and heard together as one composite suit. Additionally, in the case of Crocs U.S.A. Inc. v Action Shoes & Ors., the Delhi High Court while dealing with infringement and passing off of footwear, discussed the interplay between trademark and design law, to adjudicate on whether trademark rights could be claimed over a registered design. Holding to the contrary, the court stated that a broad claim of passing off under trade dress and overall get up could be made provided that there existed an additional/extra feature to the registered design, that qualified as subject matter for trademark protection. If there is a car design that is protected under design law wherein an additional feature of the car (let us assume an extra tail light) has accrued significant goodwill and reputation, such that it is only associated with the proprietor, in such a scenario, an infringer could be restrained from using this additional tail light as a part of its design by means of the common law remedy of passing off. Additionally, this remedy of passing off would be available even after the design registration has lapsed.
The discussion on the jurisprudence relating to automobiles would not be complete without addressing intellectual property issues pertaining to auto spare parts. While spare parts in themselves could be the subject matter of a design registration (provided that their design is devoid of any functional aspect), we have encountered several cases of trademark infringement and passing off wherein spare parts are labelled with a certain brand name indicating their corresponding compatibility with a certain vehicle. A defence that is recognised through precedents and followed in practice is specifying on the spare part that it is "suitable for" the vehicle model of a third party. In the recent case of Elofic Industries & Anr. v Mobis India Limited & Anr., wherein the infringing entity manufactured filters to be used in automobiles, the court deliberated on what would be the most appropriate way of non-infringement/fair use by a spare part manufacturer. The court had held that use of the phrase "adapted to form a part of" along with the registered trademark would be an apt way of breaking the trade connection between the spare part manufacturer and the trademark owner. There are several such cases pending before the Delhi High Court which would settle the legal position as to whether such usage would constitute trademark infringement or not.
To be (a copyright) or not to be: copyright in design drawings
The designs of all automobiles and their various features originate from ideas embodied in sketches, blueprints and drawings. Are such two-dimensional blueprints protectable as designs? Do they enjoy copyright protection? There can be significant overlap between copyright and design protection, since designs too can be represented and registered in two- dimensional formats. However, what happens when a blueprint of a design yields a design (product) that is entitled to protection as a design in its own right? Does the blueprint in itself qualify as an artistic work or is it covered under the protection granted to the final finished design? This question has long been debated by courts across jurisdictions.
The Indian Copyright Act provides that once a design is registered under the Designs Act, it cannot be protected under copyright. An exception is made for a design that qualifies for protection under the designs statute but is not registered under it. In this instance, copyright protection is available to the said design provided it has not been applied by means of an industrial process and not more than fifty copies of the said design have been made.
Several judicial precedents have addressed this overlap. In Samsonite Corporation v Vijay Sales, the courts held that drawings used to make/manufacture suitcases were distinct from drawings constituting artistic works. In this case, drawings of the suitcase were capable of design registration but were not registered. However, there was no artistic element in the drawings for them to qualify for protection under copyright law and multiple reproductions had been made. In the case of Microfibres Inc. v Girdhar & Co., a copyright infringement action was brought against an entity that used the same/similar pattern in relation to upholstery fabric. The court in this instance had qualified the pattern to be a 'design' and not an 'artistic work' protected under copyright law, and hence, the claim of copyright infringement did not hold as the unregistered design lost its copyright owing to multiple reproductions. Applying this principle to automobiles and cars, in circumstances where a blueprint is made for the design of a car, the blueprint in itself would be registrable as a design under the designs act. In the event that such a design registration is not obtained, a copyright in the said blueprint would subsist only while fewer than 50 cars were in existence with the said blueprint. The blueprint in itself, would not qualify as an artistic work and hence, independently, no copyright would lie in the same.
The way ahead
The importance of having independent design legislation and significant jurisprudential literature on this matter cannot be denied. Design law caters exclusively to aesthetic appeal and covers intellectual property that is not trademarks, copyright and patents. Since designs can be registered in both 2D and 3D forms, it is necessary that design law defines an 'industrial drawing', clarifies the aspect of 'copyright' in design, and distinguishes between copyright over artistic work as opposed to rights over industrial blueprints. This is a development one hopes will come sooner rather than later.
Additionally, in practice, owing to lack of statutory recognition granted to passing off in the Indian Designs Act, reliance is usually placed on trademarks law and the commonly accepted principles of common law as non-codification does limit the applicability of the remedy of passing off to all facts and circumstances of design rights violations.
Internationally, there have been recent instances of whole cars being counterfeited like the 'Shamborghini', the counterfeit/fake version of Lamborghini, and Fauxrarri, the fake/counterfeit version of Ferrari in Brazil. Also, the recent judgment passed by the Chinese courts in favour of Land Rover against counterfeit cars leaves one to wonder what course of action would be available to auto companies in India if variants of a registered design (that were either counterfeit or violated design rights) were in circulation and if the cause of action could be combined with other rights such as trademarks. India is the fourth largest automobile manufacturer in the world and for people to 'look toward the east' it is imperative that design law stays abreast with design innovation.
C A Brijesh is a partner at Remfry & Sagar. A disputes specialist with nearly two decades of experience, he leads the IP litigation practice at the firm, advising clients on trademark, design and copyright infringement, unfair competition issues and domain name disputes.
Sakshi Sharma is an associate in the IP litigation team and advises clients on myriad issues pertaining to copyright, trademark, design and domain name disputes.