This article is written by Simran Jeet Kaur, a student of Raffles University, Neemrana (Rajasthan). In this article, the author will be discussing how “Jewellery” can be protected under Intellectual Property Law. After reading this article, one can analyse that how under Design’s act, copyright act and Trademark law “Protection of Jewellery” can be made.
Table of Contents
Introduction
From past many years, we all have been looking how “Jewellery” has become important part of one’s life, especially for women. These days if we look around one will notice that not only women’s but yes, men’s too are fond of jewellery. We generally look around that there are different kinds of jewellery in different shapes, designs and size. In this paper, I will be describing how can one protect the “Jewellery” under various intellectual property laws. There are certain provisions under which Jewellery can be protected.
The topic “Protection of Jewellery” has hardly been discussed in India. At initial level, one might think that design of jewellery as artistic work can be claimed for protection under copyright act and its pattern under designs act. But when we talk about proper legal method, then I would like to say that it is really a tough job.
In this article, I will be describing that how one can claim protection of jewellery under design act, copyright act and trademark act.
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Protection Under Design Act
Before proceeding further, one must firstly know the meaning of design. “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.”
From the definition of design, one must be clear that design means the features of shape, configuration, pattern, ornament or composition of lines or colour applied to an article and not the article itself.
Our topic of discussion is protection of jewellery. Here, our article is jewellery. Now, when we go thoroughly with the definition of design then one will find that pattern of jewellery and its colour can be protected under this designs act.
There is a concept of proprietor. “Proprietor of a new or original design”, —
(i) where the author of the design, for good consideration, executes the work for some other person, means the person for whom the design is so executed;
(ii) where any person acquires the design or the right to apply the design to any article, either exclusively of any other person or otherwise, means, in the respect and to the extent in and to which the design or right has been so acquired, the person by whom the design or right is so acquired; and
(iii) in any other case, means the author of the design; and where the property in or the right to apply, the design has devolved from the original proprietor upon any other person, includes that other person.
In case of protection of jewellery, the proprietor will be the one who is claiming for protection of jewellery design.
Basics requrirement for protecting jewellery in India
Before claiming protection under designs act, one must be clear with the basic requirements for protecting jewellery in India. The basic requirements are as follows:
- The design of Jewellery should be new or original.
- The design of jewellery should not be disclosed to the public.
- The design of jewellery must be significantly distinguishable from the known design or combination of known design.
- The jewellery design should not comprise of any obscene matter.
- The design of jewellery must be eye appealing.
Registration process of protection of jewellery
Registration process of protection of jewellery designs are as follows:
- An application for registration of Jewellery Design shall be made to the controller of designs.
- In application for registration, one has to attach the photograph of jewellery designs.
- The person registering for protection of jewellery has to mention the class of jewellery i.e., 11-0.
- Additionally, the controller of design may register a design of jewellery, on the application of its proprietor, provided it is new or original, has not been previously published in any country and which is also not contrary to public order or morality.
- The controller shall before registration, refer the application to an examiner for examination as to whether the design of jewellery is capable of being registered and consider the report of examiner.
- The application for registration shall be made in the prescribed form and is to accompanied by the prescribed fee.
- If the evaluator finds that there is 100% originality in the design of jewellery then his jewellery design will get registered.
Note: The term of registration of a jewellery design will be initially ten years from the date of registration.
Publication of registered jewellery design
After the registration of a jewellery design, the controller shall cause publication of the prescribed particulars of the design to be published in prescribed manner. The design of jewellery thereafter, to be open for public inspection.
Protection Of Jewellery Under Copyright Act, 1957
Initially, one must be thinking that how one can claim protection for jewellery under copyright act. Firstly, I will be describing under this for what all things we can claim copyright. Under Copyright act following things can be protected:
- Literary or dramatic work;
- A musical work;
- An artistic work;
- A cinematograph films;
- A sound recording;
- A photograph;
- A computer-generated work.
As our topic is protection of jewellery, I would like to make it clear that jewellery can be protected under artistic work. “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) a [work of architecture]; and [work of architecture]; and”
(iii) any other work of artistic craftsmanship.
Under Copyright Act, one can claim protection for sketches of jewellery designs.
Rights of owner of jewellery in case of copyright under artistic work
Section 14 confers certain rights on the owner of copyright in respect of artistic work. The owner of jewellery can claim copyright for the sketches of jewellery designs. The owner of copyright in respect of jewellery will have the following rights:
- The right to communicate the sketches of jewellery to the public.
- The right to issue copies of the sketches to the public not being copies already in circulation.
- The right to include jewellery in any cinematograph film.
- The right to reproduce the sketch of jewellery in any material form i.e.
-The storing of sketch in electronic form.
-Depicting the design/sketch of jewellery in 2-dimensional or 3-dimensional form.
Idea, expression and dichotomy relation with jewellery protection
Before understanding the relation of jewellery protection with Idea, Expression and dichotomy, one must know the meaning of Idea, Expression and dichotomy. According to section 13 of Copyright act protection is granted for artistic work,
Idea: Idea means a thought or I could say some kind impression going in someone’s mind.
Expression: Expression means a way of presenting something.
Dichotomy: Dichotomy means a distinction that is present between two groups or things that are completely opposite to one another.
The owner of jewellery can claim copyright not only for the reason that he/she has novelty in idea but also, he has to show that the way of presentation of his jewellery is also unique. One cannot claim copyright on ideas but yes, can claim copyright for the way of presenting that idea. Idea of making jewellery can be same but the pattern in which that jewellery is made cannot be same. Pattern of making jewellery must have some novelty in it, if not possible, then copyright for jewellery cannot be claimed.
Dichotomy plays a major role in idea and expression as it distinguishes the two.
Where idea and expression are inseparable i.e., idea cannot be separated from the expression, then expression will not be copyrightable.
Case: Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F .2d 738 1971
- In this case, the court invoked the said doctrine to deny copyright protection for a jeweled bee pin.
- The plaintiff, filed a suit alleging that the defendants had infringed the plaintiff’s copyright in a pin made in the shape of a bee formed of gold encrusted with jewels by defendants’ entire line of a score or more jeweled bees in three sizes decorated with from nine to thirty jewels of various sizes, kinds, and colours.
- The plaintiff claimed that originality of the bee pin was in a particular arrangement of jewels on the top of the pin, but the elements of this arrangement were never identified.
- Defendant argued that arrangement was simply a function of the size and form of the bee pin and size of the jewels used.
- The court noted that a jeweled bee pin was an idea that defendants were free to copy.
- In the present case the idea and its expression appeared to be indistinguishable.
- There was no greater similarity between the pins of plaintiff and defendants than is inevitable from the use of jewel encrusted bee forms in both.
- If plaintiff’s understanding of its rights were correct, its copyright would effectively prevent others from engaging in the business of manufacturing and selling jeweled bees.
Term of copyright
Copyright for jewellery does not subsist in perpetuity. The term of copyright protection is limited to the life of the owner of jewellery and fifty years after his death in most of the countries. The limited duration of copyright protection is compromise between those who argue that copyright should be permanent i.e., last as long as the work is used because it appreciated and enjoyed by the public, and those who argue that it is personal right and should terminate with the life of the author so that the public can enjoy its unrestricted use after his death.
Section 22 of the Copyright Act, 1957 provides that copyright subsists in any literary, musical or artistic work published within the lifetime of the author until sixty years from the beginning of calendar year next following the year in which the author dies. Here artistic work is sketch of jewellery. The term copyright protection will be for the term of 60 years from the death of the owner.
Registration for jewellery under Copyright Act
The person who gets registration uses “©” symbol. Anyone who claims copyright can use this symbol. It is not mandatory to have registration for jewellery under copyright act. The registration for copyright is completely optional. Copyright for jewellery will subsist there and then only when the sketch is completed and given a material form. Copyright act merely raises a prima facie presumption in respect of the particulars related to jewellery entered in the register of copyright.
There will be mainly certain steps for registering of jewellery under copyright act. Under copyright as we are claiming protection for sketches of jewellery, steps for registration are as follows:
- The first and foremost step for registration of jewellery is to file an application either physically or electronically in the copyright office.
- Secondly, the owner of jewellery may apply for registration to registrar of copyrights in Form XIV accompanied by the prescribed fee.
- Thirdly, the application of copyright will be examined.
- Fourthly, the person applying for registration for jewellery is required to give notice of his application to every person who claims or has any interest in the subject matter of the copyright or disputes the rights of the applicant.
- Fifthly, if the registrar of copyrights does not receive any objection to registration for sketch of jewellery within thirty days of the receipt of the application, he shall, if satisfied about the correctness of the particulars given in the application, enter them in the Register of copyrights.
- Sixthly, If the registrar receives any objection in the aforesaid time or if he is not satisfied about the correctness of the particulars given in the application then he may enter such particulars for jewellery in the register as he considers proper, after holding such inquiry as he deems fit.
- The next step is final one i.e., Registration. The registration process for jewellery completes when the applicant has been issued the extracts of Register of Copyrights (ROC).
Protection under copyright law v. design law
Before understanding the relation between copyright law and design law, one must be clear with the difference between artistic work and design. Artistic work means 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; a [work of architecture]; and any other work of artistic craftsmanship whereas design can be described 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’ and excludes ‘any mode or principle of construction or anything which is in substance a mere mechanical device.
Copyright law and design law both gives protection to jewellery. The basic difference both is that under copyright one can claim protection for sketches of design of jewellery whereas the Design Act protects the pattern and representation of jewellery.
Section 15 provides that copyright shall not subsist under this actin any design which is registered under designs act, 2000. Further, copyright in any design, which is capable of being registered under the Designs Act, 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 industrial process by the owner of the copyright, or with his license, by any other person.
Case: Pranda Jewellery v. Aarya 24k
- In this case, there was a matter of copyright infringement where gold sheet articles of godhead and religious symbols were checked out.
- It was held by the Bombay High Court that the sketches and its reproduction of gold plate in 3-D form will be protected under copyright law.
- The reason behind protection under copyright law is artistic work itself.
- Additionally, the high court stated that the plaintiff holds copyright for reproduction of drawings in the form of gold plates.
- Further, it was explained by the Hon’ble judge that in this case protection under design law cannot be granted.
Protection of jewellery under trademark law
A trademark includes any word, name, symbol, configuration, device, shape of goods, packaging, combination of colours or any combination thereof which one adopts and uses to identify and distinguishes goods from those of others. This means that under trademark law, one can claim protection for name, symbol, shape, packaging and combination of colours used for jewellery. If there is any logo of jewellery that can be protected under this law.
“Trademark” means, “A mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of another and may include shape of goods, their packaging and combination of colours.”
There must be 3 essentials for claiming protection of jewellery under trademarks. They are as follows:
- There should be a proper mark for jewellery;
- The mark for jewellery must be graphically represented;
- The jewellery mark must be distinguishable from known marks of jewellery.
Mark
Before relating the concept of mark with jewellery, one must be clear with the term mark. According to Section 2(1)(m) of trademarks act, ‘Mark’ includes a device, brand, heading, label, ticket, name, signature, word, letter, shape of goods, packaging or combination of colours, numeral shape of goods, packaging or combination of colours or any combination thereof. I would like to say that, there must be proper logo or any mark for jewellery which is not general and has not used by anyone till now. One has to show uniqueness for claiming trademark for jewellery name, shape, logo and colour. The jewellery to be of distinctive character, there must be inherent qualities in the mark itself which make it so distinctive from other jewelleries.
There are some jewelleries which are very traditional. In this modern world, traditional jewellery can also have marks which shows its distinctiveness and can be trademarked under trademark law.
Why protection of jewellery is required under the Trademark Act?
Protection of jewellery is required under trademark act for following reasons:
- The name and logo of jewellery will not be used by anyone else.
- The trademark for jewellery will signify that it has come from single source.
- Trademark for jewellery will act as a prime instrument for advertising and selling of jewellery.
- Protection of jewellery is really required to be protected under trademark act as it prevents other persons to go for the reproduction of same jewellery in same style.
Registration of jewellery under the Trademark Act
There are certain steps for registration of jewellery under the Trademark Act:
- Firstly, one has to finalize the name and logo for jewellery. The name and logo for recognition of particular jewellery must be unique.
- Secondly, brand name and logo of jewellery must not be listed in Trademark Registry of India. Once, it is sure that brand name and logo for jewellery is unique, one has to initially file an application for the same in Trademark Registry if India.
- After trademark application for jewellery is filed, it is examined by the examiner.
- The examination for jewellery brand name and logo might take 12-18 months.
- After examination, if the examiner is satisfied then trademark for jewellery will be published in trademark journal.
- The next and foremost step is publication. Under this, if anyone has any kind of objection can immediately object for the same.
- Once the application for jewellery protection proceeds for trademark protection, following publication in trademark journal, a registration certificate under the seal of Trademark Office is issued.
Protection of trademark and passing off
As I mentioned earlier, under trademark law one can claim protection for brand name, logo and colour of jewellery.
Case: A. Sirkar v. B. Sirkar Jahuree Pvt. Ltd.
- In this case, there was copyright infringement and passing off for the grounds claimed by the plaintiff.
- This step could likely be tolerated by the court as there is no provision which seems to avoid dual protection.
- Under this conflict, Plaintiff claimed that some pieces of their jewellery were entitled for protection as shape of goods.
- Further, it was claimed by defendant that the plaintiff under section 2(m) of trademark act can claim protection for shape of goods.
- Section 9(3) of trademark act deals with absolute grounds of refusal for trademark.
“which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade.”
- From section 9(3), one can examine that the jewellery must be eliminated from shape mark protection.
- In this case, plaintiff claimed that defendant was selling identical jewellery but, defendant has not claimed that he was selling plaintiff’s jewellery.
- The plaintiff was creating a jewellery which is very demonstrating and it cannot be available anywhere else, if available then it can be only through the source of plaintiff itself.
- If the plaintiff is able to clarify that the public was connecting the plaintiff and defendant’s jewellery, they can successfully file a petition for passing off.
- Now the court may decide whether it was misrepresentation or not.
- The question for damaging a goodwill will not arise unless and until misrepresentation is proved.
Conclusion
These days if we look around, everyone is fond of jewellery. Our research article topic is Protection of Jewellery- A combination of design, copyright and trademark law. Now, when we talk about protection of jewellery, we can see that under intellectual property rights there are different provisions under which we can protect our jewellery. After going through detailed study of design act, copyright act and trademark law I have noticed that one cannot claim protection for jewellery under one particular act. Under copyright law, we can claim copyright over sketches/drawings of jewellery. If we talk about design act, one can claim protection over pattern, shape and colour of jewellery. Trademark act provides protection over brand name and logo of jewellery.
There are different time period of protection and those time period can be renewed as well. Protection of jewellery is a topic which is hardly discussed in our country. There are basic requirements for protecting the jewellery in India. The design of jewellery must be unique and it must not be disclosed previously to the public.
When I was writing this article, I have noticed that how beautifully the Acts under intellectual property are designed. One cannot claim protection for whole jewellery under particular act. The jewellery is put into different parts, from different parts I mean that for logo and brand name one has to look under trademark act, for pattern, shape, size, colour under designs act and for sketches under copyright act.
Lastly, I would like to say that idea for making the jewellery can be same but the way of presenting that jewellery has to be different. If one will claim protection over ideas then there will be monopoly and in market there will be great mess.
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