14 May 2023FeaturesCopyrightManisha Singh and Akanksha Kar

The junction between the Copyright Act and the Designs Act

The plaintiff, a UK-based company engaged in rail fastenings and track elasticity solutions, filed a case against an Indian company as well as its employees for infringement of the plaintiff’s trademark ‘Pandrol’ and copyrighted work of ‘Pandrol Double Resilient Baseplate Assembly System’ (DBRAS) drawings.

India’s Ministry of Railways had issued certain performance criteria for fastening systems for a ballastless track. The set parameters and standards were complied with by the plaintiff and the firm obtained approval for its drawings from the Ministry of Railways in 2011. The plaintiff holds registrations for the ‘Pandrol’ trademark dating back to 1964 and has gained reputation and goodwill through extensive use and sales promotion of its products marketed under the ‘Pandrol’ mark.

The plaintiff alleges that the defendants have copied its drawings and submitted the copied drawings under the Pandrol mark before state government entity, Madhya Pradesh Metro Rail (MPMRCL), in response to a railway tender. The plaintiff sought a decree of permanent injunction and other ancillary reliefs against the defendants.

‘An inadvertent error’

In its defence, defendant no. 1, the company that deals in railway track engineering, argued that the engineering drawings for DBRAS it submitted, are in conformity with the guidelines issued by the Ministry of Railways and that it can supply the system, as any other entity can do so. The Railway Board of the Ministry of Railways had approved six fastening systems for ballastless tracks which can be used by metro railways/mass rapid transit systems. The defendants pleaded that these systems are designed by different entities and exclusive rights can be claimed by those entities if they secure registrations— mere approval confers no statutory rights.

Defendant no. 1 claimed that ‘Pandrol’ mark on its submitted drawings was an inadvertent error which was rectified, and drawings were re-submitted without the mark. The defendant argued that the DBRAS is not registered under any Act, the drawings are in the public domain, easily available on the internet as well as the official website of the Ministry of Railways. There has been no commercial exploitation of the plaintiff’s trademark, it said. The defendant argued that it has not manufactured or produced the DBRAS components, and therefore, there is no case for trademark infringement or passing off. The defendant placed reliance on Section 15(2) of the Copyright Act (1957) that since the plaintiff’s drawings are capable of being registered under the Designs Act (2000), and based on said drawings, products have been produced more than 50 times by an industrial process, no copyright can be claimed.

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