Overlaps in Intellectual Property Law

Intellectual Property [‘IP’] refers to any creation or product of using the mind and presenting a new literary or artistic work, invention, design, symbol, images, or even names. This work is like any other property, and thus IP rights are provided for exclusive control and protection of such intangible assets. Article 27 of The Universal Declaration of Human Rights provides the author with “the right to the protection of the moral and material interests resulting from any scientific, literary or artistic production”.[1] For something to be considered as an IP, mere intangibility does not suffice. In addition to that, the subject matter ought to be ‘distinctive’, being inventive or appealing to the eye or original or something with a reputation that helps consumers to distinguish.[2]

IP Law allows the owners or creators to protect and benefit from their work or invention by getting the work copyrighted, patented, or trademarked. The purpose of IP Law is to provide rules to help secure and enforce legal rights to the author’s artistic works, inventions, and designs.[3] There are three significant parts to IP law that have expanded now, and ten more types are added to it.[4]

The three essential components are trademarks, patents, and copyrights.[5] Trademarks are used to protect symbols, names, and slogans different from the generic and descriptive marks, which do not qualify for protection. This is because the purpose of registering a trademark is to prevent confusion and avoid deceptive advertising which helps consumers to distinguish between various brands available in the market.
Patents are given to inventions which could include machines, manufactured goods, machines, etc. This gives the inventors the right to use their product in the market and allows them to derive profit from the same. A patent can be denied if the invention or the product is plain and obvious, not utile, or even morally offensive.
Copyright protection is available for a literary and artistic work that has been captured in a fixed medium. It applies to work of writing, music, movies and pictures, architecture in any such similar intellectual and artistic expressions. Even unpublished works can get copyright protection. Usually, copyright protection is provided for the duration of life of the author/creator plus seventy years after his death.

Overlaps in IP Law

An overlap happens when different IP rights vest the power in the owner over a single object or subject matter. Broadly, overlap exists when two or more IP regimes give protection over the same subject matter.[6] It arises when an IP rights holder puts forward his right under more than one doctrine of IP law. There can be various overlaps between different federals of IP law, as discussed above. This means that there can be an overlap in the protection granted by the IP law on an object, invention, or discovery. For instance, both copyright law and patent law provide protection to software, and similarly, both copyright and trademark laws can protect logos.[7] This overlapping of rights means that not only the creator or inventor will enjoy benefits flowing from both the regimes but also, the benefit otherwise flowing to consumers, other creators & competitors will be withheld.[8]

Earlier, when IP laws started to emerge, there were separate realms for each sector, although the lines separating them were not correctly drawn. Over time, the scope of IP protection started to expand, which led to blurring the lines of distinction.[9] When owners of IP pressed for greater security, they received it, which led to an increase in forms of protection made available to the same subject matter.

Patent and copyright laws create an overlap surrounding software patents. India does not generally provide patents for software. It is allowed only when the software is accompanied by hardware. Thus, copyright seems like a viable option to protect the literary aspect of the software. Designs and patents come to a debate with respect to the ‘functional element’ of an article. The ambit of patents includes items that can be given design protection. The definition of design states features which can be “judged solely by the eye” are entitled to design protection.[10] A similar overlap exists between trademark and patents where the definition of a trademark is engineered to exclude patents within its ambit but is unclear on involving those which have ceased to be a patent. One of the newest IP regimes is a geographical indication, given to products which are believed to possess unique qualities based on their origin to a particular place. This regime has an overlap with trademark protection even though statutes for both the regimes specifically mention avoiding registration if previously registered under the other head.

Aforementioned were examples of a bigger picture managed by IP laws. With the rapid emergence of ideas and inventions popping up, there is a higher possibility of overlap due to different interpretations. However, hostility towards overlapping IP laws creates gaps between the existing regimes and increases the potential for overlap. Overlapping of rights becomes an issue of concern as an increase in the variety of protection subverts the entire purpose behind the protection of IP. This intersection needs to be resolved through proper segregation through definitions by the legislature and taking the help of the judiciary in clarifying the doubts. A higher amount of protection interferes with the public usage of such protected property. A flexible amount of limitations can be imposed to safeguard unauthorized use to avoid overlaps between different IP regimes. Overlapping rights will continue to cause numerous challenges if the expansion of rights continues with this rapidness. Thus, legislature and judiciary can offer a huge helping hand by demystifying the grey areas and by realistically attempting to avoid any future overlaps.


[1] The Universal Declaration of Human Rights (1948), Article 27.

[2] Neil Wilkof&Shamnad Basheer, Overlapping Intellectual Property Rights, 60 (2012).

[3] What is Intellectual Property Law?, HG.org Legal Resources Available at: https://www.hg.org/intell.html (Last Accessed: May 28, 2020).

[4] Neil Wilkof&Shamnad Basheer, Overlapping Intellectual Property Rights, 59 (2012).

[5] What is Intellectual Property Law?, HG.org Legal Resources Available at: https://www.hg.org/intell.html (Last Accessed: May 28, 2020).

[6] Prarthana Patnaik, Delhi HC Deals with Yet Another Design-Trademark Overlap! (2018), Available at: https://spicyip.com/2018/12/delhi-high-court-deals-with-yet-another-design-trademark-overlap.html(Last Accessed: May 28, 2020).

[7] Laura Heymann, Overlapping Intellectual Property Doctrines: Election of Rights versus Selection of Remedies, 17 Stan. Tech. L. Rev. 239 (2013).

[8] BananaIP Reporter, Overlapping IP Protection: Call for Caution (2019), Available at: https://spicyip.com/2018/12/delhi-high-court-deals-with-yet-another-design-trademark-overlap.html (Last Accessed: June 1, 2020).

[9] Ibid.

[10] The Designs Act, 2000, Article 2(d).

Soumya Gupta from West Bengal National University of Juridical Sciences, Kolkata.


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