Overlap of Trademark and Copyright Laws

Trademark and copyright protect different subject-matters as well as differ in their scope of protection. The objective of the trademark regime is to protect distinctive marks used in the course of trade in order to distinguish one source from the other, while the rationale behind the copyright regime is to protect creative/artistic works so as to promote the arts. In India, the copyright regime is governed by the Copyright Act, 1957 and the trademarks regime is governed by the Trade Marks Act, 1999.

The copyright law protects all original works of art (literary, dramatic, musical & artistic works, cinematograph films, & sound recordings) and vests in the creator a bundle of rights such as the exclusive right to use, reproduce, communicate to public, make translations and adaptations of the work. The trademark law provides for the protection of marks (including shape of goods, packaging & combination of colours) which are capable of being represented graphically and indicate a connection between the goods/services and the source of origin, during the course of trade.

Despite having different origins and objectives, there still exists a possibility of overlap between the two laws, for the same subject-matter. For instance, an artistic work being used as the logo of a company or on the label/packaging of its goods, comes under the purview of both the trademark as well as copyright law. While the artistic work per se is protected by the copyright law, since the artistic work has also acquired an independent trademark significance by functioning as a source identifier, it can also be registered and protected as a trademark under the Trade Marks Act. In such cases of an overlap, given that the two laws vary in their scope of protection, different aspects of the same subject-matter are protected, thereby making them complementary.

Both laws address the point of overlap between copyrights and trademarks. Section 45 of the Copyright Act provides for artistic works which are capable of being used in relation to goods or services. The provision states that in such cases, the copyright application shall include a statement to the effect that no trademark identical with or deceptively similar to such artistic work has been registered under the Trade Marks Act by any person other than the applicant. Additionally, Rule 22 of the Trade Marks Rules, 2017, is to be read in conjunction with the aforementioned section, for obtaining a certificate to the said effect from the Registrar of Trademarks.

The Trade Marks Act also recognises copyrightable subject-matter for trademark protection, as the definition of a "mark" includes shape, packaging, combination of colours or any combination thereof. It further addresses the point of overlap between trademark and copyright vide Section 11 where it states that a trademark shall not be registered if its use in India is liable to be prevented by virtue of law of copyright.

It is evident from the aforementioned provisions that both laws aim at maintaining the purity of their respective Registers by ascertaining that marks that are capable of having cumulative IP protection (copyright & trademark) are registered to the same proprietor and that there is no third party that obtains a conflicting registration for the same mark.

Right-holders largely benefit from the overlap of different IP laws as they are able to maximise the scope of protection for a single subject matter. Majority of the courts in India have also recognised trademark as well as copyright protection for the same subject matter and have been in favour of the overlap, so far. However, there is rising concern over the concept of overlapping IP rights and the expansion of scope of protection. Particularly in respect of the case in point, the expanded scope of protection offers perpetual protection to certain artistic works through the trademark law even after their copyright period has ceased to exist.

Both laws have not addressed the said point of contention unlike in the case of an overlap between copyright law and the law of industrial designs wherein, it is clearly pronounced that copyright in respect of any design which can be registered under the Designs Act, 2000, shall not subsist under the Copyright Act, 1957. Additionally, the copyright law provides that in case of a design which is capable of being registered under the Designs Act, but which has not been so registered, the copyright in the said design ceases as soon as any article to which the design has been applied to, has been reproduced more than fifty times by an industrial process by the rightful owner or by the person so authorised.

As for the overlap of copyright and trademark rights, there is no settled law yet to address the flip-side to it. A critical point to be noted is that prolonged restriction of the entry of artistic works into the public domain by offering perpetual protection through trademark law would defeat the very objectives on which the copyright law has been built on. As the field of IP constantly evolves, in order to strike the right balance between right-holders' interests and public interest at all times, the law should also constantly evolve and address concerns while they are still at a nascent stage. As the saying goes, it is always better to nip it in the bud!

Aishwarya Vijayaraghavan
Associate & Patent Agent
Surana & Surana International Attorneys, Chennai, India