Design<->TM (When Juxtaposed)!

 

If we can interpret a sentence into several different or distinct meanings, then that framed sentence only is flawed. And that also implies to any legal definition. I’m absolutely not endorsing in verbatim studies or discussing question of law itself, BUT still, what can be precisely defined, (s)could be defined. And this is the reason that for more than millennium, holy wars were unleashed because of misinterpretation of sentences. This ain’t Science, that works on successive steps. Framing of Sentences are in our hands & can be drafted unambiguously.

So, in one of the previous blog, I elucidated in detail about design patent, design copyright & copyright in design. The present blog is regarding what if a design under Design Act becomes a trademark, or vice versa. And can there be any passing off in the case when only design is involved.

Now, S. 2(d) of Design Act excludes Trademark or any artistic feature related to Copyright to be considered as Design. S. 19(e) defines when the Design can be Cancelled if the above is proven right. And there’s no passing off as such defined in Design but only Infringement. But what if when a design & trademark both juxtaposed? Why it matters? As TM can be renewed every 10 years (perpetual rights) whilst Design’s life is mere 10 + 5 (if renewed) years. And further can it be used as TM post registration as there’s no remedy for cancellation under S.19 of any registered design when being used as TM?

If passing off is a common law practice, & might be invoked if design acquires trademark status, with specific features, then what about above definitions? Infringement of design is already defined in Design Act. Design in TM albeit not explicitly defined in TM Act; so presumably, a Design in TM can exist i.e. a design with trade dress in TM. But what when a Design under Design Act acquires category to be considered as TM? Then technically, it should cease to exist as a Design! And if considered as otherwise for passing off, then any further feature only in the Design could be taken into account i.e. word mark or trade dress or label or color scheme or get up style in or on it!

Mandatory in simple terms can exist mutually exclusively with Directory! So why hotchpotch? Either add one definition in another, or, let it be mutually exclusive. 🤔

 © Pranav Chaturvedi