The advancements in technology is shaping challenges for intellectual property protection in India and one of the most pressing issues is design protection for robots. The visual appearance of robots captivates customers to buy a particular robot and creates a brand value for a company. To effectively monetise the brand, a company needs to formulate a robust strategy for protection and enforcement of a robotic design.
The protection for a robotic design in India can be sought under the Copyright Act, 1957, the Designs Act, 2000, and the Trade Marks Act, 1999. However, the choice for protection under a particular statue can be a strategic choice based on the business need. In particular, the fine detail of each statute has to precisely understood prior to making a decision. For example, if the robotic design needs to be protected under the Copyright Act, 1957, then Section 15 of the Copyright Act, 1957, and Section 2(d) of the Designs Act, 2000, has to be carefully examined.
Section 15 of the Copyright Act, 1957, reads as follows:
15. Special provision regarding copyright in designs registered or capable of being registered under the Designs Act, 2000 (16 of 2000) -
(1) Copyright shall not subsist under this Act in any design which is registered under the Designs Act, 2000 (16 of 2000).
(2) Copyright in any design, which is capable of being registered under the Designs Act, 2000 (16 of 2000), 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.
Section 2(d) of the Designs Act, 2000, reads as follows:
(d) “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 (14 of 1957).
The plain reading of the provisions of Section 15(1) of the Copyright Act, 1957, specifically provides that simultaneous registration of the design under the Copyright Act, 1957, and the Designs Act, 2000, does not subsist. Further, Section 15(2) of the Copyright Act, 1957, provides that if the design “is capable of being registered under the Designs Act, 2000 (16 of 2000), 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.” Since, in most cases the robotic design is capable of being registered under the Designs Act, 2000, the copyright protection for the robotic design needs to be chosen when a limited edition of robots is to be manufactured. The added advantage for protection of the robotic design under the Copyright Act, 1957, resides in the terms of duration for protection of the robotic design and remedy in cases of infringement.
Additionally, while considering the protection of the robotic design under the Trade Marks Act, 1999, the provision of Section 2(d) of the Designs Act, 2000, prohibits simultaneous registration of the design under the Designs Act, 2000, and the Trade and Merchandise Marks Act, 1958 (Trade Marks Act, 1999). However, a common law remedy for passing off is available to the plaintiff. Hence, a company can first register the robotic design under the Designs Act, 2000, and thereafter, on expiry of duration of protection under the Designs Act, 2000, an application may be made for registering the robotic design as a trade mark under the Trade Marks Act, 1999.
Therefore, devising a strategy for the protection of robotic design well in advance will provide an edge in a market to a company over its competitors.
Note: This article does not constitute legal advice. The author has provided some of the options available for protection of design in India but there are various other ways which may be opted for protection and enforcement of design in India.
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