This article is written by Raslin Saluja, from KIIT School of Law, Bhubaneswar. This article throws light on the various existing laws for the protection of jewellery and highlights the loopholes and deficiencies in classifying them under one specific law.
Table of Contents
Introduction
With an ever-increasing demand for jewellery, it has become easier to sell cheap replicas of high-end luxurious jewellery which is affordable only by quite a few people. This boom has brought the jewellery sector to follow consumer trends and has provided huge popularity and recognition to several jewellery artists. However, this copy-paste culture needs to be stopped which brings us to the question of how? Intellectual property (IP) protection of jewellery has not yet gained much attention in India, but in theory, there are combinations of IP laws that can be used to secure a jewellery design.
From a very fundamental understanding, a sketch or a blueprint of a jewellery design can be protected under the copyright law as an artistic work, while the real appearance and result of its pattern and configuration could be granted protection under the design law. The logo symbol and the brand name would come under the protection of trademark law and if any unique technique is involved in yielding the design of jewellery then it can be granted protection under the patent law. However, the question at hand is more critical as various issues revolve around the subject. All these laws have their own set of limitations leaving the designers with an unsure means of the enforcement of their rights. Thus this article explores the issues and possible solutions for classifying the protection of jewellery under the existing laws.
The copyright versus design conundrum
Artistic work in Section 2(c) of the Copyright Act, 1957 includes inter alia (amongst other things), a drawing, and any work of artistic craftsmanship that involves talent, labour, and creativity of mind. Whereas on the other hand, a design as defined under Section 2(d) of the Designs Act, 2000 includes features such as shape, configuration, pattern, ornament, or composition of lines/colours used in either 2D (two dimensional) or 3D (three dimensional) or in both the forms in any article, by any industrial process or means that would appeal to and will be judged solely by the eye in a finished piece and excludes any artistic work or anything which is a result mere mechanical device or a mode of construction principle.
The difference in the application of the two was dealt with in the case of Pranda Jewelry v. Aarya 24K (2015). Herein the issue was of copyright infringement of gold sheets articles used in deities and religious symbols. The court observed drawings and their reproductions in gold sheets in 3D forms is an artistic work under the end product being the artistic work itself. A simple understanding of the said statement is when a painting is copied onto a paper or canvas, though it is being reproduced the features of shape and configuration are not applied. However, when such configurations/shapes/patterns are used in an article in its actual form- these similar features though they are in drawings or plans with an artistic quality are to be considered as designs.
Further according to Section 15 of the Copyright Act, 1957, a design that is registered under the Design Act, 2000 will not allow copyright to subsist. Where a design that is eligible to be registered under the 2000 Act has not been registered would be granted protection up to fifty applications. In such cases, if protection is extended to the drawing under the copyright law and the actual jewellery article under the design law, then both these provisions overlap simultaneously protecting the design for more than 15 years.
Protection of the handcrafted designs
Another area where light needs to be shed is the protection of handcrafted traditional designs. The issue regarding the consideration of handcrafted designs as artistic craftsmanship was raised. However, the court remained silent on this point in the case of A. Sirkar v. B. Sirkar Johuree Pvt. Ltd (2020), and allowed an interim injunction application for passing off and copyright infringement. In the case of Microfibers Inc. v. Girdhar and Co (2009), the legislative wisdom behind the Act of 1957 and 2000 was observed. The court noted that by extending a different period for the copyright which is 60 years and design which is 15 years, the legislature intended to treat commerce and art differently. That the work of pure artistic nature attracted higher protection while the design used for commercial activity needed a lesser period of protection.
This leaves us at a crossroad where the protection of jewellery under the IP laws do not seem as simple. It would depend upon the court’s wisdom and judgment on a case-to-case basis. To have a clear demarcation between the two laws would require us to determine which law extends protection at which point in time. Another dilemma is if the jewellery was to fall under the category of artistic craftsmanship then the application of design protection remains out of our consideration.
From the above-mentioned judgments, it can be understood that copyright in the original drawing continues to exist, while it ceases to exist for a design under Section 15 of the Copyright Act, 1957 if more than fifty applications are done. Further, for unregistered designs which have been produced more than fifty times and the court decides to follow the judgment in Biba Apparels (2016), then protection to the original drawing may also not be given. This might render the jewellers helpless in no position to prevent others from duplicating their designs.
Thus here the safer option for the jeweller would be to register the jewellery design under the 2000 Act if he intends to make more than fifty applications. Further, where that remains undecided, the design should be applied for registration before the final call of marketing and sale as Section 4 of the Design Act prohibits the registration of a design that has been disclosed to the public by a tangible form of publication or use, anywhere in India or any other country before the filing date, or where applicable, the priority date of the application for registration.
Adaptation versus reproduction right
When an original drawing of jewellery design on paper is converted into a 3D form, it should be considered as an adaptation as under the above-mentioned A. Sirkar case, while following the judgment in the Pranda Jewellery, it would be considered as reproduction.
The definition of adaptation as under Section 2(a) of the Copyright Act, 1957 relates to an artistic work, involving any rearrangement or alteration or by conversion of it by way of public performance. While the right of reproduction is granted to the exclusive copyright owner under Section 14(c)(i) for any 2D depiction of a 3D work. Now, if the jewellery is created in the same manner as drawn in the original work then reproduction would be suited, otherwise, if any modifications are made, then adaptation would be the right term. Here the original work would be protected under the copyright act while the determination of the actual product would be left at the hands of the court.
Passing off and the trademark law
As mentioned earlier, the brand logo and name can be granted protection under the trademark law. In the A Sirkar case, the plaintiff brought an action and claimed on the grounds of copyright infringement and passing off and since there is no bar for dual protection this could stand some ground. However, jewellery would be excluded from protection under trademark upon referring to Section 9(3) of the Trademarks Act, 1999 which states that a mark shall not be registered as a trademark if it consists of a shape that attaches substantial value to the goods.
A party can also approach the court under both the design act and passing off as according to the case of Micolube India Ltd v. Rakesh Kumar (2013), they are to be pursued as separate causes of action. The court observed that a design infringement occurs based on jewellery’s newness, and originality of the design in question whereas passing off pertains to goodwill damages and misrepresentation.
Protection of jewellery designs based on culture and traditions
India is a land of culture and is famous for its handicraft designs and craftsmanship. These designs are deeply rooted in the cultural identity of various communities hailing from different parts of the country and have been carried forward from generation to generation. Some famous examples are Meenakari jewellery which was introduced by Raja Mansingh of Rajasthan. Jadau jewellery which was introduced by the Mughals has semi-precious stones, and crystals beaded into gold ornaments. This is also prevalent in Rajasthan, Gujarat, and Kutch regions. Few others include Temple jewellery, Filigree jewellery, Tarakasi, etc are all as ancient as 5000 years back.
These articles fall under the special category of traditional cultural expressions known as TCEs by WIPO. They include songs, dances, handicrafts, designs, ceremonies, tales, or any other artistic or cultural expressions, which ‘form part of the identity and heritage of a traditional or indigenous community’ and ‘are passed down from generation to generation. Since India lacks a unique and uniform separate legislation for their protection, the designers have to retort to obtaining either certification trademark (CTM) or Geographical indication (GI) or both. These types of jewellery fail to get protected under copyright since they do not meet the requisites of having a single owner, originality and a fixed date of creation.
Even under CTM, to protect the name of these jewellery designs, a governing body for certifying such products needs to be formed. However, CTM fails to protect the subject matter and hence jewellery might not be protected under the heading of shape marks. So far as the practical implementation is concerned, it rather seems difficult due to a lack of awareness of these laws. Nonetheless, GI comes extremely handy for collective protection of the indication for an unlimited period. The nature of GI allows only authorized members of that specific community to produce the said articles which if done by other people would cause infringement under Section 22 of the Geographical Indications Act, 1999.
Loopholes in GI grants
But there are also certain loopholes in the past for the registration of jewellery under GI. These grants have been given without determining proper links and connections between the article and its source of origin. To mention some instances would include the 2006 registration of silver filigree of Karimnagar whose information as recorded in the journal fails to reflect the attributes of quality, characteristics, or reputation to its source of origin. Similarly in 2007, in the registration of temple jewellery of Nagercoil, though it elaborates on the majority of products being purchased from raw materials sourced from Chennai, it still misses certain specific details which would indicate its link with the origin.
Conclusion
Thus even though for the time being, India lacks a sui generis framework that would efficiently help in classification as well as protection of jewellery, the best options for the Traditional Cultural Expression (TCEs) would be a combination of a variety of IP laws comprising copyright, certification marks, design, GIs and passing off. To claim protection for jewellery, one would require to classify its elements into different parts and get the required recognition under the respective laws. On the receiving end of this law are the creators and the producers who become the victims of this shortcoming. Therefore they must build their IP strategies in such a way to protect their valuable designs and consider the existing framework while planning the process. The creators need to remember that there are a variety of ways to protect a single design and they are not mutually exclusive. To have a robust protection mechanism in form of various protection and enforcement options would only strengthen their claim over their precious asset. As for the lawmakers they should try to bridge the gaps and address the deficiency in the law in favour of the claimants.
References
- https://spicyip.com/2021/03/protection-of-jewellery-a-combination-of-trademark-design-and-copyright-law-part-i.html
- https://iprmentlaw.com/2018/08/06/guest-post-solomon-co-jewellery-design-an-intellectual-property-asset/
- https://www.origiin.com/2019/02/09/title-protecting-the-intellectual-property-of-jewelry-designs-in-india/
- https://selvams.com/blog/protecting-jewellery-designs-in-india-intellectual-property-simplified-2/
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