The Afterlife Of A Design: Reconciling Design Expiry With Trade Dress Protection In India
- IJLLR Journal
- 1 hour ago
- 2 min read
Mohammed Raihan, LLM (IPL), Christ University, Bengaluru
ABSTRACT
This paper confronts a critical doctrinal schism in Indian intellectual property law: the conflict between the finite monopoly granted by the Designs Act, 2000, and the potentially perpetual protection available for trade dress under the Trade Marks Act, 1999. The central problem is that the fundamental policy of design law—to enrich the public domain by ensuring that protected designs are freely available for public use after a maximum 15-year term— is systematically undermined when the aesthetic features of an expired design are subsequently protected as trade dress. This creates a "public domain paradox," where the commercial success of a design during its limited monopoly becomes the very basis for an indefinite extension of that monopoly, a practice tantamount to the impermissible evergreening of a time-bound right. Through a doctrinal, jurisprudential, and comparative analysis, this paper articulates the core thesis that allowing such a transition of rights constitutes an unwarranted extension of monopoly that contravenes the legislative intent of the Designs Act. The methodology involves a teleological interpretation of the relevant Indian statutes, a critical evaluation of the functionality doctrine's efficacy as a safeguard, a deconstruction of key Indian case law, and a comparative study of the legal frameworks in the United States and the European Union. Key findings reveal that the current functionality tests are inadequate to resolve this conflict, as the very features that lend a design its aesthetic appeal are often "aesthetically functional." Furthermore, Indian jurisprudence, while acknowledging the overlap between designs and trade dress, has yet to squarely address the post-expiry conflict, leaving a significant legal lacuna. This paper contributes to the existing discourse by proposing a clear legal framework to resolve this impasse. It recommends the judicial adoption of a rebuttable presumption that the aesthetic features of an expired registered design are functional and/or have entered the public domain. As a more definitive solution, it calls for a legislative amendment to the Trade Marks Act, 1999, to explicitly exclude expired registered designs from the scope of trade dress protection, thereby providing doctrinal clarity, ensuring legal certainty, and upholding the pro-competitive principles foundational to India's intellectual property regime.
Keywords: Trade Dress, Design Law, Intellectual Property, Design Expiry, Public Domain, Functionality Doctrine, Acquired Distinctiveness, India
