Intrinsic Synergy Between The Designs Act and The Copyright Act

The Supreme Court of India heard an appeal which was based on a dispute regarding alleged copyright infringement. The main issue was regarding Inox's assertion of copyright over engineering drawings for cryogenic storage tanks and distribution systems utilized in trailers and semi-trailers.

Cryogas and LNG Express had petitioned for the dismissal of Inox's lawsuit under Order VII Rule 11 of the Code of Civil Procedure, 1908, on the grounds that the drawings were capable of being registered as 'designs' under the Designs Act, 2000, and were de-copyrighted by reason of non-registration and reproduction more than fifty times through an industrial process,. The High Court of Gujarat had set aside the Commercial Court's order that allowed the rejection of Inox's suit.

The Supreme Court framed the key legal issue as the maintainability of the application for rejection of the plaint, which necessitated determining the parameters for distinguishing between a 'design' under the Designs Act and an 'artistic work' under the Copyright Act, 1957, particularly concerning the limitation set out in Section 15(2) of the Copyright Act. The Apex Court analyzed in detail, the interplay between these two IP legislations, i.e the The Copyrigh Act and The Design Act, and examined the judicial precedents in India, the United States, and relevant international conventions.

However *Supreme Court formolated two-pronged test, to determine whether a work qualifies for protection under the Designs Act and so also: (i) whether the work is purely an 'artistic work' or a 'design' derived from it for industrial application, and (ii) if not eligible for copyright protection, applying the 'functional utility' test to ascertain its suitability for design protection.

The Apex Court emphasized that the question of whether the engineering drawings constituted a 'Design' capable of registration was a mixed question of law and fact that could not be decided summarily under Order VII Rule 11 CPC based on a preliminary assessment of the plaint.

Consequently, the Supreme Court upheld the High Court's decision, dismissing the appeals and directing the Commercial Court to conduct a trial to determine the true nature of the Proprietary Engineering Drawings and other IP infringement claims.

Coram: Justice Surya Kant & Justice Nongmeikapam Kotiswar Sin