Parth Chhapolia
Introduction
The intersection of copyright and design protection in India has long been on a murky terrain, particularly in industrial innovation, where artistic duties frequently take a functional format. Section 14 of the Copyright Act, 1957 (“the Act”) defines the ambit and extent of a copyright, whereas Section 15(2) of the Act states that such a right is nullified once a design is applied industrially more than fifty times, which clashes with the protection typically granted to artistic works. This creates a conflict because, while artistic works are ordinarily granted copyright protection for a much longer duration, their industrial application can strip them of this safeguard. This forces them into the narrower and time-limited regime of design protection. Thus, resulting in a thin and unresolved boundary between artistic and design protection. This raises significant questions about the overlap, which has been addressed in a recent judgement by the Supreme Court.
Can artistic works used in industrial settings, such as engineering drawings, still be protected by copyright? Or do they lose that protection once they are applied functionally and fall under design law instead? The Division Bench of the Supreme Court on April 15, 2025, in the case of Cryogas Equipment Pvt. Ltd. v. Inox India Ltd. (“Cryogas”) furnished a watershed moment in clarifying this overlap. The court crafted a two-pronged test, which focuses on, firstly, the nature and the use of the work, and secondly, its functional utility versus aesthetic appeal, as a method to resolve overlapping claims. The blog delves deeper by engaging with foundational Indian judgements and the global standards, such as the ‘conceptual separability’ test applied by the United States. It aims to assess the doctrinal milestone set by the court to explain the ‘penumbra’ between a copyright and a design.
The Discord: Understanding the Genesis of the Conflict
It arose when Inox India Ltd. accused Cryogas Equipment Pvt. Ltd. of unlawfully reproducing its proprietary engineering drawings and accompanying literary documentation, related to cryogenic semi-trailers. According to Inox, such documents and designs must be protected within the ambit of section 14 of the Act. On the contrary, the defendants argued that these engineering drawings constituted ‘designs’ under the Designs Act, 2000 (“the Designs Act”) and since they were reproduced more than fifty times, they were protected under Section 15(2) of the Act. The Commercial court rejected the plaintiff’s case under Order VII Rule 11 of the Code of Civil Procedure (‘CPC’) relying on clause (d), which states the situation barred by law and which happened because of statutory limitations. Later, the Hon’ble Gujarat High Court reversed the decision and held that the question of artistic versus industrial designs requires a factual inquiry. The Hon’ble Supreme Court upheld the High Court’s ruling and undertook a conceptual analysis of the interplay between the statutes involved. The next paragraph will examine the said conceptual analysis, particularly focusing on the court’s approach to understanding the relationship between copyright protection under the Copyright Act and design protection under the Designs Act. Subsequently, the case was remanded back to the trail court for a renewed proceeding, based on the framework drafted by the Supreme Court in the Cryogas Judgement.
To begin with, Section 14(c) of the Act protects ‘artistic works’ including the right to reproduce, adapt, and communicate such works to the public. Section 2(c) of the Act defines artistic works broadly, which includes, paintings, drawings, diagrams, and architectural works. However, Section 15(2) of the Act curtails this protection by stating that copyright in any design capable of registration under the Designs Act ceases once the design is applied to an article and reproduced more than fifty times by an industrial process. This creates a conflict, as commodities that have artistic elements lose their copyright protection when used in an industrial process, even if the artistic value is still present.
Whereas, Section 2 (d) of the Designs Act, 2000, defines ‘design’ as features of shape, configuration, pattern, ornament, or composition of lines or colours applied in an industrial process, judged solely by the eye. It excludes artistic work from its definition. The Designs Act deliberately excludes ‘artistic works from its definition of design, potentially leaving a gap in protection for designs that possess both artistic and industrial qualities. This creates an inherent tension between the two statutes, where works that blur the line between art and utility may struggle to secure adequate protection under either regime. This tension was addressed in the Cryogas judgement, as explained in the next section.
Supreme Court’s Two-Pronged Test
In the test formulated by the Supreme Court in the Cryogas judgement, firstly, it must be determined whether the work in question is purely an artistic work entitled to copyright or whether it is a design derived from such work and used in an industrial context. Secondly, if the work is deemed to be a design, courts must apply the functional utility test, assessing whether the dominant characteristic of the work is its functionality or its aesthetic appeal. To reach such an evaluation, the Court primarily determined on whether an object qualifies protection under the Copyright act for being an ‘original artistic work’ or whether it would earn protection under the Designs Act. Furthermore, the court examined the ‘functional utility’ of an article for the disqualification from the ambit of the Copyright Act. In other words, it examined whether the item was created for practical use rather than purely for artistic expression. If the article was primarily functional, it would not be eligible for protection under the Copyright Act. Instead, it would fall under the Designs Act, which is meant for designs that have a utilitarian function. The court further referred to multiple judgements as explained below, to substantiate this stance.
In Microfibres Inc. v. Girdhar (“Microfibres”), the Hon’ble Delhi High Court dealt with the question of copyright infringement on the manufacture and sale of a fabric; and held that the plaintiff’s work would not qualify as a piece of art as it has been applied to construct a particular ‘configuration’ in place. Since the intention was to position some textile goods for industrial use and not for independent existence, hence it would be covered under ‘textile fabrics’ in Class 05-05 of the Design Rules, 2001. Similarly, in Dart Industries Inc. v. Techno Plast the Hon’ble Delhi High Court held that 2D drawings for Tupperware-like containers lost copyright protection from the date they were used to create industrial products. The decision of Microfibers was affirmed by the other High Courts on the same principle, including the Bombay and the Kerala High Court.
To understand the concept of ‘functional utility’, it is important to understand Designs first. The objects and the purpose of the Designs Act was illustrated in the case of Bharat Glass Tube Ltd. v. Gopal Glass Works Ltd. in the Supreme Court. The main objective of the Designs Act was to safeguard the intellectual property rights of creators by granting them exclusive rights over their original designs for an initial period of ten years, which can be extended further. The Act is designed to recognize and reward the effort, skill, and innovation of individuals who develop new and unique designs, ensuring they benefit from their creative work.
Historically, this concept was first explained in Amp v. Utilux, where the House of Lords explained a distinction in design between ‘features’ and ‘shapes’ and held that a balance between aesthetic appeal and industrial efficiency is required. If the shape serves only to make the article function and not to be aesthetically pleasing, would not be covered under the provisions of the English Registered Designs Act, 1949 as compared, vis-à-vis The Designs Act, 2000 in India. As per IC (1) of the Registered Designs Act, 1949, a design should not be solely dictated by technical functions. There should be some aesthetic appearance, to formulate it as a Design. This is synonyms to Section 2(d) of the Designs Act, 2000 which states that a design cannot be a mere mechanical device. This stance was further explained in Smithkline Beecham Plc. v. Hindustan Lever Ltd. where the Hon’ble Delhi High Court applied the functional utility test and held that an ‘S’ shaped design on a toothbrush would be for a functional purpose and not for an aesthetic purpose. It is important to note that such articles are created with an intention and purpose to fulfil the needs of an entity and not to fulfil the artistic perception, hence, they would not fall under the category of Designs Act, 2000 or Section 14 of the Act.
In conclusion, a complete dominance of technical functions would neither attract as a design nor as a copyright. An example for the same can be a machine gear, where the shape, size, and teeth are solely controlled by mechanical needs. If the product has functional utility but is not completely dominated by it, such as a fan with blades, where the blades act as the functional part and can have different shapes and curves, would be covered under Designs Act, 2000. Finally, if the product carries original artistic value beyond its function, it may also be protected under copyright law. An example can be of music or a song, covered under Section 14(a) of the Act. Now, it is important to note that High Courts across different jurisdictions and different timelines have attempted to constitute a basic distinction between Copyright and Designs, often focusing on the ‘intent’ behind the creation of a work. However, these courts have not yet established a definitive or comprehensive distinction between the two concepts, often leading to overlaps.
International Standards: Insights and Implications
The Hon’ble Supreme Court’s reasoning in Cryogas judgement aligns closely with global standards. The doctrine of ‘conceptual separability’ in the United States, notably explained in Star Athletica v. Varsity Brands (“Athletica”), states that artistic elements of a useful article are copyrightable only if they can exist independently of the article’s utilitarian aspects. It means that once the artistic work is separated from the useful article, it should still be perceived as a two or a three-dimensional piece of art and not existing in a nebulous form, to be covered under Copyright laws as clarified in the judgement. This is depicted from the earlier ruling of Mazer v. Stein, where the United States Supreme Court held that a dancer statuette used in a lamp base could be copyrighted, provided that the aesthetic element was separable from the utilitarian function. In other jurisdictions, the functionality doctrine similarly excludes industrial features whose form is dictated solely by functional requirements and not for design protection.
In the European Union, the Community Design Regulation (EC) No 6/2002 distinguishes between registered community designs (for industrially applied designs) and unregistered designs, offering layered protection. Crucially, the Third Chamber’s court in Cofemel v. G-Star Raw, held that for a work to enjoy copyright protection, it must reflect the author’s “own intellectual creation,” thereby setting a higher threshold that prevents functional designs from being inappropriately shielded under the guise of artistic expression. The decision signalled a stricter threshold than India’s broad originality test.
In Public International Law, Intellectual Property protection begins with the Paris Convention, 1883, wherein Article 5 states about the protection of industrial designs but it offers no clarity on overlaps with copyright. The Berne Convention for Protection of Literary and Artistic work, 1886 similarly left the resolution of overlap open to the national laws. The Trade Related Aspects of Intellectual Property Rights Agreement, 1995 (“TRIPS”) marked a major development, detailing the requirements and scope of industrial design protection under Articles 25 and 26. It allowed the exclusion of designs based on functional utility and mandated at least 10 years of protection. However, it also permits protection through either design or copyright law, leaving the conundrum for the domestic jurisdictions to decide on. Now it lies upon the legislature or the Constitutional Courts for different countries to work upon the concept and formulate an objective distinction for ease.
Conclusion
In a world where India’s copyright registrations have seen a consistent rise, touching 29,466 registrations in 2022-23 as per Intellectual Property India Annual Reports, with 21,171 disposals, the distinction between copyright and design is no longer a niche concern. The Supreme Court’s judgment in Cryogas serves as a timely recalibration of this overlap, clarifying that not all artistic ingenuity can transcend into industrial repetition unchecked. Though, the test raises both doctrinal and implementation-related concerns that merit further reflection.
Firstly, the judgment rightly attempts to resolve the statutory tension between the two statutes, yet it fails to define actionable standards for determining when functional utility “dominates” over aesthetic appeal. Although the Court noted that they may rely on expert opinion to assess this; it did not clarify on what kind of experts are suitable, or how conflicting opinions should be weighed. In Ramesh Chandra v. Regency Hospital, the Supreme Court noted the importance of expert opinions. The court clarified that even when such an opinion is advisory in nature, it becomes indispensable when courts must interpret technical or industry-specific distinctions, like those between artistic value and functional design. Such absence of procedural guidance in this judgement invites interpretive subjectivity.
Secondly, the lack of protection for hybrid works that combine functionality with artistic expression creates significant ambiguity. For example, fashion designers frequently blend artistic expression with practical clothing designs. In the United States, even in Athletica, the court tried to separate the two entities as done in Cryogas through the two-pronged test. However, scholars have criticized this approach for failing to consider whether the artistic feature also performs a functional role. Such oversight risks granting copyright to functional features, effectively creating “backdoor patents.” The Cryogas ruling does not even engage with this line of inquiry, leaving Indian courts without a clear framework to evaluate hybrid works.
Overall, the court has supplied a clear test with two main limbs that offers a starting point for navigating the interface between copyright and design law. However, its practical application remains uncertain. Without clearer procedural guidelines or legislative support, the decision may fall short of becoming the guiding framework it aspires to be for future intellectual property litigation and policy in India.
Parth Chhapolia is a third-year undergraduate student pursuing a B.B.A. LL.B. (Hons.) degree at Jindal Global Law School, O.P. Jindal Global University, Haryana, India.
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