Wednesday, September 17, 2008


South Korea's Samsung Electronics has released to the public its letter sent on Sept. 16 to the board of directors at SanDisk (SNDK) expressing deep disappointment over a delay in its $5.85 billion cash offer for the U.S. flash memory-card maker.Shortly after Samsung disclosed the proposal, SanDisk issued a statement saying its board "unanimously rejects" the offer (although it did not rule out a deal at a better price.Samsung currently pays SNDK over $350 million a year in royalties to use patent flash technology. A takeover would result in reducing these costs and making use of SND's extensive knowledge in these fields.


A suit was filed by J.K. Rowling (author of Harry Potter series) and Times Warner against RDR Books for infringement of their Intellectual Property Rights. A website called Harry Potter Lexicon was created by Steven Jan Vander Ark, who is a librarian by profession. The lexicon lists characters, places, creatures, spells, potions and even a time line. The website is a very popular one among Harry Potter fans and Rowling had even given it an award as the best fan site. Mr. Vander Ark with the help of RDR Books decided to make a hard copy of the contents of the website. This induced Rowling along with Times Warner, who own the trade marks and copyright for Harry Potter file a case against RDR Books claiming that such a publication would hurt and infringe upon Rowling’s own copyright as she wanted to publish a lexicon of the same order in the near future.

The principle in law which is in question is the fair use doctrine, which allows the limited use of copyrighted material without requiring permission from the right holders. Has Mr. Vander Ark infringed upon the rights of Rowling? 

The judge had ruled that Vander Ark had indeed infringed the rights of J.K. Rowling, thereby giving ruling the case in her favour. The matter seemed to have gone agisnt the defendents due the fact that a lot of material seems to have been copied verbatim by Vader Ark.

This judgement has created a serious precedent for derivative works as the original authors will try to stop people from publishing works based on the original content, thereby not recognising the work and labour of people who put in their own skill and labour to create derivate works. They too have rights and this must be recognised as well.


Recently, a newspaper carried an Article stating that the “Tirupati ladoos would soon get patent rights under Geographical Indications of Goods (Registration and Protection) Act”.

Ladoos can’t be patented. The idea is absolutely ludicrous. Patents can only be granted for inventions. Furthermore patents can’t be granted under the Geographical Indications of Goods Act. Geographical Indications of Goods refers to country or place of origin of a product.

This clearly shows careless reporting. The common man, from the above can clearly be confused as to the fact that Tirupati ladoos can be given patent protection, which is totally untrue.

Such reports must be carefully vetted before they are published. The help of experts in the fields should be taken before making such statements. This is urgently required to improve the standards of the articles being published.


Bangalore based, Infosys Technologies, recently made headlines, as they have been prohibited from carrying on their business in France under their trade name “INFOSYS”. A civil court in Boligny, France ruled that, the usage of the name ‘Infosys’ by the Indian Company constituted infringement of the trademark and corporate name of another Company “Infosys France”. Infosys Technologies has sought a stay order on the Civil Court’s decision and are planning on appealing against the ruling.

Several companies fail to realize how important it is for them to secure their intellectual property (IP), particularly their trade mark and more importantly their house mark in contemporary times. Expansion of market/services also means enhancement of goodwill and trade reputation. After the lifting of trade barriers, domestic companies have forayed into the international market in large numbers.  Indian Companies, especially, the ones in the IT sector, capitalizing on the changed atmosphere, further fueled by liberalization of the Indian economy, have opened their business operations in various countries. But in that, what the companies have lost sight of is, securing their Intellectual Property Rights


The aforesaid event is just an eye opener. What happened today to Infosys Technologies may happen to any Indian Company tomorrow. Trade Marks are distinctive signs or indicators as to the origin of the products/services of Companies. Unscrupulous individuals hijack well known trade marks and pass off their goods as that of the original owner. To prevent this from happening, owners of a trademark have to secure it by registration

There is now a paradigm shift in trade. Indian Companies, as is the case with other global companies, are striving hard to enter into the international business areas or alternatively to safe guard their international businesses. Off late, big corporate houses of India, like the Tata, Reliance, and Videocon, to name a few, are in the process of consolidating and increasing their holdings through numerous global acquisitions and merger. In such a scenario, protection of Intellectual Property is of a great significance.

From the abovementioned debacle of Infosys, we expect that, the other Indian entrepreneurs would take the required measures, in securing their IP and avoid various unpleasant situations like the one being faced by the soft ware giant.


Trade Mark is a badge of origin, of the quality of the products, and thus helps the public in removing any confusion in their minds as regards to the source of the products. In contemporary times there has been an expansion in the scope of registered marks. Trade dress is a part of this expansion.

In India with the liberalization of the economy and India opening its doors on investment in any every sector, numerous foreign brands in FMCG sector are entering the Indian market. Therefore to distinguish goods from the competition, FMCG companies invest heavily not only on devising brand names but also on creating trade dress or packaging to act as identifiers.


Products have a personality. A key element of a products personality or brand image is its packaging. Trade dress consists not of words or symbols but of a products packaging.[1] In recent years the concept of trade dress has been expanded to encompass the design of a product.[2]

Trade dress involves the total image of a product and may include features such as shape, colour or colour combinations, textures, graphics or even particular sales techniques.[3]

Trade dress is of great importance as illiterate people get confused if there exists two products with similar trade dress. Illiterate people look at the colour, shape, image, textures etc of the product when they purchase it.

In the United Kingdom Trade dress is protected under the law of Passing Off. Passing Off is a common law remedy for protecting unregistered Trademarks. In the United States of America they can be registered under Section 2 of the Lanham Act and even without registration, a non functional, distinctive trade dress is protected under Section 43 (a) of the Lanham Act. The requisite conditions for registering a trade dress with the U.S Patent and Trademarks Office are that it should be -

1)      inherently  distinctive or has acquired secondary meaning and

2)      is non functional.

In India the concept of trade dress is encompassed in the broad definition of Trade Mark.  Under Section 2(m) of the Trademarks Act, 1999

mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof.


The definition above includes shape of goods packaging or combination of colours or any combination which are those elements which constitute the total image of a good or trade dress.


A landmark judgement of importance in India which deals with this concept in detail is that of Colgate Palmolive Co. v. Anchor Health and Beauty Care[4]. In this matter, an ad interim injunction restraining defendant(Anchor Health and Beauty Care)  from use of trade dress and colour combination similar to that of plaintiff (i.e a red and white colour combination) was applied for. The Court held that the visual impression of product gives overall impression to customer as to origin of goods and if first glance of article gives impression as to deceptive similarities in respect of colour combination, getup etc. it is a case of confusion and that such similarities amounts to passing off one's own goods as those of another with a view to encash upon goodwill and reputation of latter.[5]


It was held by the Court that an ordinary consumer gets an overall impression of source/ origin of goods from colour combination, shape of the container, packaging etc. The court also opined that no party can have monopoly over a particular colour but if there is a substantial reproduction of the colour combination in the similar goods either on the container or packaging which over a period of time has been imprinted upon the minds of consumers, it is certainly liable to cause confusion but also dilution of distinctiveness of colour combinations.

In another matter of S.V.S. Oil Mills vs.S.V. N. Agro-refineries & another[6], the plaintiff firm was manufacturing and marketing various kinds of refined edible oils under the registered trade mark "SVS" with inverted triangle and a distinctive colour scheme and get up of red and yellow. The defendant, an erstwhile partner of plaintiff firm constituted another firm, which was in the same business, using same trademark "SVS" but with a different colour scheme, the Court held that,

 "the material form, colour and getup of the wrapper or label or container of the articles are the physical means of expression and the design of the container or the label is of great significance as it is meant to catch the attention of any purchaser. The design of the label would include not only the trademark, but also the colour scheme and getup of the wrapper or container as well. It is well known that there are several eye-catching designs and the customers who are familiar with the articles would invariably be guided and attracted to purchase goods by the sight of label. There is a power behind the design of the label as the customers have the intuitive instinct to select the goods by the design, colour, getup and the trade name and if the goods of same kind, with the same colour scheme and getup in the labels belonging to two manufacturers with phonetic similarity in trade names are exhibited or offered for sale, a normal consumer of average intelligence with imperfect memory would take one article as belonging to other".

Thus from the above it is apparent that even though there exists no specific provision as regards trade dress, protection for the same is provided for in our country  by the filing of  a suit for passing off or a suit  for the  infringement of trademark.


Though this concept is a new one, it is a major part in determining the commercial success of a business enterprise and therefore its protection is of the utmost importance.

[1] Two Pesos vs. Taco Cabana Inc., 505 U.S. 763(1992)

[2] Wal-Mart Stores Inc. vs. Samara Bros. Inc., 120 S.Ct.1339(2000)

[3] John .H. Howard Co. vs. Clarke Checks Inc., 711 F2d 966 (11th in  1983)

[4] 2003(27)PTC478(Del)

[5] Ibid

[6] 2004 (29) PTC 548 (Mad) (DB)]



There does exsist a concrete connection between Section 2(c), Section 15(2) of the Copyright Act, 1999 and Section 2(d) of the Designs Act, 2000 in India. An analysis of the same has been done with the help of case laws below.


Section 2 (c) of the Copyright Act, 1999 states:

artistic work" means,--

              i.      a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality;

            ii.      an architectural work of art; and

          iii.      any other work of artistic craftsmanship


In the matter of Microfibres inc. v. Girdhar & Co.  & Ors.[1],  the plaintiff was the copyright owner of the artistic work vested in the Upholstery Fabric Design under the laws of the United States of America. They contented that the defendants were manufacturing and marketing upholstery fabric, which violated the plaintiff’s copyright under section 51 of the Copyright Act, 1957. It was held that in order for a work of art to qualify as an “artistic work”, it must fall within the definition of artistic work in Section 2 (c) of the Copyright Act.



Section 2(d) of the Designs Act, 2000 states:


"design" means 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 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.o(14 of 1957)


It was also held that “the exclusion of artistic work as defined in Section 2 (c) of the Copyright Act from the definition of “design” under Section 2(d) of the Designs Act, 2000 is only meant to exclude the nature of artistic works like the paintings of M.F. Hussain. It is thus, the paintings, sculptures and such works of art which are sought to be specifically excluded from the new Act.


Section 15(2) of the Copyright Act, 1999 states:


Copyright in any design, which is capable of being registered under the Designs Act, 1911 (2 of 1911), but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright or, with his licence, by any other person.


In the case of Polymer Papers Ltd v. Gurmit Singh & Ors[2], it was held that since industrial drawings and designs for the purpose of manufacturing of filter related machines or components and as such clearly fell within the meaning of design as defined in the Designs Act, 2000. The underlying message of this judgment is that the claim of copyright in the industrial drawings which are being use or manufacturing purposes is not maintainable.


In the matter of Dart Industries Inc. & Anr. v. Techno Plast & Ors[3]., it was stated that once drawings are made for creating the ultimate product design, the copyright in the said drawings cannot be claimed under the Copyright Act. The underlying message is that copyright in the Industrial design is governed by the Designs Act, 2000. If a design is registered under that Act, it is not legible for protection under the Copyright Act. In such cases after the design is registered under the Designs Act, the protection given is not copyright protection but a true monopoly based on statute inasmuch as such designs were never protected by common law.


In the mater of Samsonite Corporation v. Vijay Sales[4], it was held that “whatever be the nature of the drawing the purpose and intention would be the relevant criterion to consider whether the drawings are designs.”


Thus, in conclusion one must look at the intention of the drawing or the purpose for which it is made before looking at whether copyright or design protection is applicable. This is of great importance as this would solve any controversies which section 15(2) may throw up. Drawing comes under the purview of copyrights but any drawing which is to be used for an industrial purpose comes under the purview of designs.



[1] 2006 (32) PTC 157 (Del.)

[2] 2002 (25) PTC 327(Del.)

[3] 2007 (35) PTC 129 (Del.)

[4] 1998 PTC (18) 372