Copyright registration and trademark protection
30th December, 2011
Nestle fortified its rights to use a red mug signifying coffee following the decision of the Delhi High Court earlier this month. The issue revolved around Nestle’s copyright to the red mug with a golden line and its subsequent trademark registration.
The defendants claimed that copyright in respect of the red mug also showing black coffee being poured into it with froth on top was originally created by the company’s Director in 1975. It also argued that no great degree of skill was involved in designing the red mug and there could be no claim to exclusivity to colour.
The ruling, however, took into account lack of evidence that copyright in the design existed prior to 1990 when the design was created for the plaintiff by an employee who also assigned them his rights. The court was of the view that designing and depicting a mug in a certain way was ‘artistic work’. Further the plaintiff had obtained trademark registration in 2003 during pendency of the suit. The plaintiff also successfully claimed that the design had acquired secondary meaning and mark, to identify them.
The court held that mere registration under the Copyright Act cannot be used as a defence and would not take the case out of the purview of Sections 29(1) and (2) of Trademarks Act, 1999. Noting that the red mug device was substantially similar and would mislead the ordinary observer, the court passed a decree for permanent injunction restraining the defendant from infringing either copyright or trademark.