Khaitan & Co represented Inox India before the Supreme Court of India on an Intellectual Property dispute. The deal team was led by Smriti Yadav, Nirupam Lodha, Dhiren Karania, Kshitij Parashar, and Gautam Wadhwa, with Senior Advocates Chander M. Lall and J. Sai Deepak appearing for Inox.
In a landmark judgment, the Supreme Court has resolved a longstanding ambiguity concerning the overlap between copyright and design protections under Indian intellectual property law. The bench comprising Justice Surya Kant and Justice N Kotiswar Singh was hearing special leave petitions filed by Cryogas Equipment and LNG Express India challenging common judgement dated 22 October 2024 of the High Court of Gujarat which had held in the favour of Inox India by overturning the decision of a commercial court in Baroda, which commercial court had allowed an application under Order VII Rule 11 of the Code of Civil Procedure, 1908 filed by LNG Express India. The Hon’ble Apex Court noted that it felt the need to establish clear parameters distinguishing works eligible for protection under the Designs Act, 2000 versus the Copyright Act, 1957.
The Court introduced a ‘twin-test’ framework to consider: (i) whether the work in question is purely an ‘artistic work’ entitled to protection under the Copyright Act or whether it is a ‘design’ derived from such original artistic work and subjected to an industrial process based upon the language in Section 15(2) of the Copyright Act; (ii) if such a work does not qualify for copyright protection, then the test of ‘functional utility’ will have to be applied so as to determine its dominant purpose, and then ascertain whether it would qualify for design protection under the Design Act, to determine the applicability of Section 15(2) of the Copyright Act, 1957, which addresses the cessation of copyright protection for designs reproduced industrially without registration under the Designs Act, 2000.
This judgment provides much-needed clarity for creators, designers, and manufacturers, particularly in industries like textiles, fashion, and consumer goods, where the line between artistic expression and industrial application often blurs. By delineating the boundaries of copyright and design protections, the Court aims to prevent dual monopolies and encourage innovation while safeguarding creators' rights.
On the analysis of the facts of the present case, the Apex Court concurred with the reasoning of the High Court of Gujarat that the question as to whether the original artistic work would fall within the meaning of ‘design’ under the Designs Act cannot be answered while deciding an application under Order VII Rule 11 of the CPC. It added that this stage would involve only a prima facie inquiry as to the disclosure of cause of action in the plaint.
The question pertaining to ascertaining the true nature of Inox’s intellectual property under the present suit involves a mixed question of law and fact and could not have been decided by the commercial court at a preliminary stage based upon such a casual appraisal of the plaint averments. The Apex Court saw fit to direct the commercial court to consider the issue afresh and conduct the trial.
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