Whenever we discuss copyright protection laws in India, they are mostly ambiguous. There are plenty of gaps in the copyright protection act, 1950. They say that registration is not compulsory but again, they say that if you require legal protection in case of contravention, certification of registration would be concrete proof in one provision that is peculiar and is the only provision that forms the link betwixt copyright and trademark.
As per section 45 of the act, in the case of artistic works, to acquire copyright, the work owner will have to file a trademark clearance certificate with other required documents. Here, it is vital to begin with the trademark registration process that assures safeguarding your intellectual asset.
Before going into the process of acquiring a trademark clearance certificate, let’s learn about the artistic work.
As per section 2(c), artistic works offers a list of copyrightable work as given below;
– Engraved art.
– Architecture work.
– Sculpture.
– Artistic craftsmanship.
– Photography.
– Drawing, maps, diagrams, or plans.
The term artistic works consist of both 2D and 3D work. But if the specific work is to for any commercial objectives regarding goods or services, then in such scenarios, the act directs to acquire trademark clearance certificate or search certificate from the office of trademark registration under section 45 of the act.
Defining TM-C or search certificate.
Trademark clearance certificates as search certificates are issued by the trademark registrar mentioning that the proposed artistic work is not misleading, identical or similar to trademarks already registered under the act. It is also to verify that no such applications are made for anyone else’s specific artistic work.
Why is it requisite for artistic work and not for other copyrightable works?
Entrepreneurs persistently strive to promulgate their brands and incorporate their brand logos in all of their works. This logo designed is a classic illustration of artistic work. Hence, in such cases, the specific logo can obtain protection under 2 IPR regimes such as copyrights and trademarks.
The primary objective of a trademark is to ensure that no confusion will arise in customers’ minds of the two products and would safeguard the logo only in case of interstate commerce based-on the taxonomy of goods and services. Still, the copyright would safeguard the artistic design logo from being imitated or used without approval irrespective of whether it is being used to brand goods and services. Hence, copyright offers broader protection.
Now, why only artistic work?
As the rest of the other copyrightable works do not possess any connection with trademark. Dramatic or literary work or cinematography work does not possess an element of trademark requisites.
Usually, designs and logos are for brand identities for depicting businesses that protect as a trademark. As they are original artworks that possess a characteristic of artistry, they are also safeguarded as copyright. Only specific creative works can be copyrighted for protection, such as artistic works like brand design or logo. If a brand logo has a characteristic of artistry and is original, it can be protected in copyright and trademark protection.
Design registration and artistic work.
A famous painting of artistic work can be protected under copyright registration. Such painting’s design can be protected in terms of the provision of designs act.
The Delhi HC’s judgment in microfibers inc. VS Girdhar & Co & Anr (2009) stated clarity between artistic and design act. It ruled that copyright would exist in the original work of art. The copyright or author holder would continue to enjoy the longer protection under the copyright act for the original artwork.
In the case of Holland company LP and Ors VS SP industries (2017), Delhi HC interpreted the relevant section of design act and copyright act and rules that where a design of an article is prepped for industrial production of an article, it’s a design and can be registered under the design act under section 14(c) of the copyright act.
The process to acquire a trademark clearance certificate.
To obtain it, the application TM-C has to be submitted with the required documents. The following details needs to be filled in;
- Applicant’s name and address.
- Contact details, mobile no & Email ID.
- Applicant’s nature – individual/company/HUF/LLP.
- If applied through an agent, then;
– Agent’s name and address.
– Agent’s contact details.
– Power or authorization of attorney.
– Agent’s nature – whether he/she is a trademark agent, constituted attorney, or advocate.
– Copy of logo or image in triplicate (three copies) (33cm*20cm).
– Details of the person filing the documents.
Mode of submission.
Manual submission – you will have to go registrar’s office of trademarks physically located in Kolkata, Mumbai, Delhi, Chennai, Ahmedabad. Then you will have to wait for 15-20 days for receiving the acknowledgment of receipts.
E-filing – here, you will receive acknowledgment of receipt instantaneously on the government website. Once you receive it, you are eligible to use the ™ symbol beside your brand name.
Fees structure.
According to 1st schedule of trademark rules, 2017;
Once the form is submitted with required documents, the registrar would search, and within thirty days, the search results would be given with issuance of the certificate.
If there is no similar or identical trademark, then the trademark clearance certificate will be given. Also, the registrar might ask for a statement of requirements from the applicant, and if the requisites are not adhered to, then within 2 months from the date of such calling of the statement, the request on form TM-C will be treated as abandoned.
Search certificate cancellation.
The registrar might cancel the search certificate under the sub-rule (1) after issuing the notice. Mentioning the grounds on which the registrar cancels the certificate and after giving the sensible opportunity.
The registrar does the conflict check process.
In India, before registration of an artistic work that can also be used as a trademark, the trademark registrar is approached for certification. There are no trademarks on record that favor copyrightable artistic work. Once it has been certified and confirmed by the trademark registrar that there are no same or identical trademarks on the record, artistic work can be submitted for registration. Likewise, a trademark cannot be registered if it conflicts with copyrighted work.
There is no process under the trademark laws in India to examine copyright records while examining trademark applications. Even if it does, then it is not feasible to keep a record of unregistered copyrights in artistic works that might result in original works as soon as they come into place.
Therefore, it is important to acquire a trademark clearance certificate under section 45 of the act while applying for the copyright.