On 15th April 2025, the Supreme Court of India (“Supreme Court”) settled the long-standing dichotomy arising out of the intersection of the ‘copyright’ and ‘design’ law(s), thereby ensuring coherence and consistency in the application of intellectual property (“IP”) law in India. The case involved adjudication of appeals arising out of the judgment delivered by the Gujarat High Court involving an IP infringement claim filed by Inox India Limited (“Inox”) against Cryogas Equipment Private Limited (“Cryogas”) and LNG Express India Private Limited (“LNG Express”) regarding the design and manufacturing of cryogenic storage tanks and distribution systems mounted on trailers and semi-trailers for transporting industrial gases and liquified natural gas (“LNG”).
In the Trademark Suit No. 3/2019 (“Suit”) filed before the Commercial Court, Inox had claimed infringement of two distinct types of copyright infringement: (i) Proprietary Engineering Drawings of LNG semi-trailers; and (ii) Literary Works containing details, processes, descriptions, and narrations written by Inox employees. LNG Express filed an application (“Application”) under Order VII Rule 11 of the Code of Civil Procedure (“CPC”), seeking rejection of the plaint in the Suit on the ground that it was not maintainable under Section 15(2) of the Copyright Act, 1957 (“Copyright Act”) as the Proprietary Engineering Drawings fell within the definition of a ‘design’ under Section 2(d) of the Designs Act, 2000 (“Designs Act”), and that Inox had lost copyright protection by failing to register them under the Designs Act whilst reproducing beyond the statutory threshold of fifty times through an industrial process. The Commercial Court initially allowed LNG Express’s Application, rejecting Inox’s plaint. After multiple appeals and remands between the High Court and the Commercial Court, the High Court ultimately set aside the Commercial Court’s order and restored the Suit. This resulted in the present appeals filed by Cryogas and LNG Express before the Supreme Court.
The primary issue requiring adjudication was whether the High Court erred in setting aside the order of the Commercial Court allowing the Application under Order VII Rule 11 of the CPC thereby rejecting Inox’s Suit. However, considering the abstruse nature of the underlying dispute, the Supreme Court ventured into the determination of parameters for a work or article to fall within the limits prescribed under Section 15(2) of the Copyright Act, by virtue of which it would be classified as ‘design’ under section 2(d) of the Designs Act. In doing so, the Supreme Court attempted to address an interesting juxtaposition by arriving at a two-pronged approach after conducting a thorough analysis of the current IP statutory framework in India against the backdrop of comparative jurisprudence from the United States, referring to treaties like TRIPS and the Berne Convention. Through its two-pronged approach the Supreme Court ultimately set out the definitive factors to be considered in determining whether a work ought to be conferred protection under the Copyright Act or the Designs Act within the confines of section 15(2) of the Copyright Act.
Based on its comprehensive analysis of the relevant statutes and precedents, the Supreme Court formulated a “two-pronged” approach to crack open the conundrum caused by Section 15(2) of the Copyright Act so as to ascertain whether a work is qualified to be protected by the Designs Act.
(i) Firstly, it must be determined 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; and
(ii) Secondly, if such a work does not qualify for copyright protection, then the test of ‘functional utility’ will have to be applied to determine its dominant purpose, i.e. utility vs. aesthetics in order to ascertain whether it would qualify for design protection under the Designs Act.
While laying down the aforementioned test, the Supreme Court cautioned that the courts, while applying this test, ought to undertake a case-specific inquiry guided by statutory provisions, judicial precedents, and comparative jurisprudence, bearing in mind that the overarching objective is to ensure that rights granted under either regime serve their intended purpose without unduly encroaching upon the domain of the other.
Applying the aforementioned principals, the Supreme Court upheld the order of the High Court, noting that the matter involved a significant mixed question of law and fact which cannot be decided in a summary manner, at a preliminary stage. Accordingly, the matter was remanded to Commercial Court with a direction to conduct a trial to discern the true nature of the Proprietary Engineering Drawings based on the test laid down by the Supreme Court within one year.
This landmark judgment provides much needed clarity on the intersection between copyright and design protection in India. By establishing a clear two-pronged test, the Supreme Court has created a framework for determining whether a work falls under the Copyright Act or the Designs Act. This decision will serve as an important precedent for future cases involving similar issues of IP rights classification, particularly in the context of industrial designs and technical drawings.
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