Kiran Shoes Manufacturers v. Registrar of Copyrights & Anr.
2013 (54) PTC 386 (Del.) (DB)
Decided on: 24.02.2012
Kiran Shoes Manufacturers (Appellant) filed an appeal against the order of the Copyright Board whereby the Copyright Registration of the Appellant was expunged/cancelled under Section 50 of the Copyright Act. The appellant is a Nepal based registered partnership concern which manufactures and markets shoes under the Trade Mark ‘GOLDSTAR’ along with side trim device which is a part of their trade mark label applied to the footwear. As per the Appellant, the side trim device of the sport shoes which is a part of the trade mark is an artistic work which was designed by one Shri Mukti Chakraborty and the same was assigned to the Appellant. The said side trim device was registered under the Copyright Act but the registration of the same was expunged.
Side Trim Device
Basis of the order of the Copyright Board:
- The work was intended to be used as affixation to shoes since respondent is in that business.
- The use, in any case would have been more then 50 by now and therefore, in light of Section 15(2) of the Copyright Act, 1957 the registration fails.
- No document to support the claim that author Mukti Chakraborty has assigned the work to the Appellant.
- Provisions of Section 15(2) of the Copyright Act are not applicable inasmuch as no registration under the Designs Act has been obtained by the appellant in respect of the concerned work.
- Work in question namely “side trim” is an artistic work with ‘GOLD STAR’ inscribed thereupon and cannot be registered/registerable as a ‘design’ under the Designs Act, 2000.
The Hon’ble Court dismissed the appeal filed by the Appellant and held that the Side trim is a design under the Designs Act, 2000 and therefore Section 15(2) of the Copyright Act, 1957 would clearly be attracted. In doing so the Hon’ble Court relied on the following:
- The definition of the term ‘design’ under the Designs Act, 2000.(“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 an 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 of 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 or property mark as defined in Section 479 of the Indian Penal Code or any artistic work as defined in Clause (c) of Section 2 of the Copyright Act, 1957.)
- The interpretation of the term ‘design’ in Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd.; 2008 10 SCC 657
- The fact that appellant has got the design registered shows that the aforesaid side trim is fit for registration under the Designs Act, 2000.
- Side trim is a design under the Designs Act, 2000 and therefore Section 15(2) of the Copyright Act, 1957 would clearly be attracted.
- As per Microfibres Inc. v. Girdhar and Co. and Anr.; 2009 (40) PTC 519 if the design is registered under the Designs Act, the Design would lose its copyright protection under the Copyright Act. If it is a design registerable under the Designs Act but has not so been registered, the Design would continue to enjoy copyright protection under the Act so long as the threshold limit of its application on an article by an industrial process for more than 50 times is reached. But once that limit is crossed it would lose its copyright protection under the Copyright Act.
Author’s Comments – The Hon’ble Court has noted in Paragraph 5 of the Judgment that no Design Registration has been obtained by the Appellant in respect of the concerned work. However, in paragraph 11 of the judgment it is written that the appellant has got the design registered. We believe on account of the fact that the Hon’ble Court in paragraph 11 has given the Design Registration Number, the design would have been registered. In light of the fact that the design was registered the conclusion arrived by the Hon’ble Division Bench is correct.