Jewellery, as soon as we hear the term, rings a bell for occasions such as wedding, birthday of a special one or an investment made for the future, especially in a country like India. Indian jewellery with its exquisite craftsmanship and variety, inspired from India's rich culture and heritage, has an element of extensive uniqueness in its designs.
With the pandemic hit world in the present and in the past, from traditional modes of business, it is the need of the hour for various jewellers to have online businesses with a website, to cater to the stiff competition across the industry. With expansion of businesses on e-commerce for reaching a wider consumer base and additional sales, there is a greater need for protection of various jewellery brands and designs, because of greater accessibility of the designs to the public at large. Intellectual property law provides such protection for various jewellery brands, their designs, and ideas. Further, there is a greater need for protection on the e-commerce platforms against cybercrimes. For luxury goods like jewellery, criminals are devising methods to hack online security of the consumers.
Given the nature of goods and credibility requirement, the jewellery industry has to follow certain compliances to safeguard the interests of the consumers and to create uniform standards. Bureau of Indian Standards plays a key role in enforcing and applying these compliances.
The article also includes a comparative analysis across jurisdictions to entail the protection available in the jewellery industry and better application in India.
Protection of jewellery under the intellectual property law regime in India
► Trade mark
The Trade Marks Act, 19993 (Indian TM law) implies that the name, symbol, form, packaging, and colour combinations used in jewellery can all be protected under the law. There are three requirements for seeking trademark protection for jewellery which are as follows:
1. An appropriate mark for jewellery is required.
2. The mark for jewellery must be vividly displayed.
3. The jewellery mark must be distinct from other recognisedjewellery marks.
To obtain a trademark for a jewellery name, form, logo, or colour, one must demonstrate originality. For the jewellery to have a distinct personality, it must have intrinsic traits that set it apart from other pieces of jewellery. Further, as issue which isa bone of contention in case of jewellery industry is the use of family names for example, Joy Alukkas or Kalyan Jewellers, one of India's biggest jewellers, is named after its founder. There are umpteen number of cases where an enterprise is named after the family or the founder. However, registration of such family names has become a tricky domain from a trademark perspective. The Indian TM law, unlike its predecessor law4, has no provision to allow or disallow the use of surname or personal names. The definition of the “mark” doesnot explicitly include or exclude surnames and personal names. Thus, it is assumed that such registration is allowed, and hence, even applied for. The renowned automobile brand Mahindra and Mahindra5, in the past has obtained successful injunction against a party using the surname “Mahindra” as their trade name in spite of this surname being quite common in India. The rationale behind this being that Mahindra had acquired distinctiveness and secondary meaning of the word “Mahindra” with its continuous use and if such a mark is used by another party, it would result in confusing the public.
However, in another case6, filed by a leading lawyer in Delhi (currently a sitting Judge at the High Court of Delhi), against a Delhi-based law firm called “Singh and Associates,” the Court noted that the surname “Singh” is a very common surname in India and no person can claim his/her monopoly over it. Hence, for registration and further protection, it becomes important for a brand to acquire its own distinctiveness for further protection.
Sketches of jewellery designs are protected under the Copyright Act, 19577, as artistic work. Copyright protection lasts throughout the designer’s lifetime plus another 60 years. Copyright registration is not a mandate in this regard, however, if you wish to enforce a design, you must register it.
Creating a 2-dimensional or 3-dimensional representation of a jewellery design or drawing can also be protected under the Act. Moreover, the idea, expression, and dichotomy come into play in this regard. The owner of the jewellery might claim copyright not only because of the uniqueness of the concept but also because of the distinctive method in which his jewellery is presented.
The appearance (photographic depiction) and pattern of an individual product or a group of goods are protected under the design law. The design is protected for ten years, which can be extended by another five years. Because the two laws overlap when it comes to jewellery, the Copyright Act stipulates that if the work can be registered as a design, it will not be protected under copyright and if it can be registered as a design but hasnot been, copyright protection will be lost if the product using the design is manufactured more than 50 times.8 Hence, in case a design is reproduced more than 50 times, then registration must be done under the Designs Act, 20009 to get protection for 15 years, otherwise copyright protection can be sought for the design.
The legislative aim underlying the Copyright Act, 1957, and the Designs Act, 2000 has been made clear in Microfibres Inc. v. Girdhar & Co.10, wherein a Division Bench of the Delhi High Court observed that the relevant Acts appear to be providing higher protection to “pure original creative works” and “lesser term of protection to designs with a commercial character”.
► Geographical Indication (GI)
GIs may be held in a group and protect indicators for an indefinite time. GI registration and protection is excessively helpful as only members of a community can produce those designs. It has been a practice in India to grant GIs for traditional jewellery designs, for instance, “Silver Filigree of Karimnagar” as Karimnagar had been producing the unique jewellery for generations. Also, a GI for “Temple Jewellery of Nagercoil” was filed in 2007, and a logo was registered in 2016 in connection to the GI. The origins of temple jewellery may be traced back to Nagercoil in the 17th century, according to the GI’s journal copy.
The technology used in making jewellery can be patented. However, it has to be unique and different. There can be two cases where a patent can be granted (a) patent on the product i.e. article of jewellery; and/or (b) process of manufacturing a piece of jewellery. However, in all cases, the following essentials are required to be satisfied:
(a) Patentable subject-matter: The Patents Act, 197011 provides for cases where an invention is not patentable. Hence, the precondition for patenting is to come out clear from these conditions.
(b) Novelty: Novelty is an important criterion in determining patentability of an invention. novelty or new invention is defined as “any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification i.e. the subject-matter has not fallen in public domain or that it does not form part of the state of the art”. The novelty requirement in essence states that an invention should never have been published in the public domain. It must be new with no same or similar prior arts.
(c) Inventive step or non-obviousness: Inventive step is defined under Section 2(ja)12 of the Patents Act as “a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art”. This means that the invention must not be obvious to a person skilled in the same field as the invention relates to. It must be inventive and not obvious to a person skilled in the same field.
(d) Capable of industrial application: Industrial applicability is defined under Section 2(ac) of the Patents Act as “the invention is capable of being made or used in an industry”. This essentially means that the invention cannot exist in abstract. It must be capable of being applied in any industry, which means that the invention must have practical utility in order to be patentable.
Hence, for obtaining a patent, it is essential to comply with all the abovementioned conditions. Further, once protection is granted, the owner gets a strong set of rights to be the sole manufacturer of such a product.
► E-commerce and jewellery
India’s fastestgrowing and most interesting commercial transaction channel is e-commerce. From US $48.5 billion in 2018, the Indian e-commerce sector is anticipated to rise to US $200 billion by 2026. Between 2017 and 2018, online jewellery sales increased by more than 14%.13 Modern e-commerce technology allows replicating (or even improving) the in-store purchase experience easier than ever before.
Online buyers can analysejewellery pieces from every aspect, using techniques such as 360-degree imagery and zoom lenses. The industry is likely to grow more competitive as more merchants in the jewellery industry see the tremendous possibilities in the e-commerce sector.
But e-commerce, has its challenges for IP owners, as pointed by the Delhi High Court in Christian Louboutin Sas v. Nakul Bajaj14, that the “sellers of counterfeit or infringing products seek shelter behind the platform’s legitimacy.” The Court further went on to point out that the owner of the trademark suffers a huge loss of customer base especially in the case of luxury goods like jewellery and the trademark owner's brand equity is also diluted.
Even after the challenges, e-commerce provides a huge opportunity for jewellery brands to present themselves outside their geographical territory. A robust framework with the right legal and cyber protection is a key to successful e-commerce operations. Further, in any e-commerce operation, compliance with the information technology laws is a must as an operator tends to collect a series of personal data right from preferences of a customer to their financial details such as bank account. Hence, protection of the customer data becomes a high-risk factor and the most important aspect in the e-commerce industry.
► Protection of jewellery business from cybercrime
While e-commerce has proven to be a great opportunity for both sellers and buyers of jewellery but, it has its own perils. A recent study from Foason shows fraud attacks increased by 19% from 2018 to 2019 across the online retail landscape.15 This is worrisome especially in the case of luxury items like jewellery which involve huge capital transactions.
These attacks range from phishing, return abuse and shipping fraud to account takeovers, identity theft and other emerging threats. Recently, the famous jewellery brand Pandora also, became a victim of phishing after, multiple people were sent after a fake website manifesting to be Pandora showed its products at unreasonably low rates16. Similarly, last year the global jewellery brand Claire's succumbed to a mageware attack when the hackers were able to breach into the website of the brand and access the payment details of the buyers.17
Thus, protection of jewellery businesses from cybercrime becomes essential, and seeing an opportunity arising out of this situation, a lot of insurance companies globally have started providing cybersecurity insurance which indemnify in case of any cyberattack.
► Why certifications and standardisations are essential
Apart from the brand and aesthetics, the quality of a jewellery piece also becomes a relevant factor to draw consumers from the window to the counters, in other words, for a precious good like jewellery, a consumer would always want to check the quality before buying. Standards and certifications are the most important elements to determine the genuineness and quality of a product.
In India, the national standard body is the Bureau of Indian Standards (BIS), which is based on certain international standards and allows the jewellers to register and obtain the same. A registered jeweller can have his jewellery hallmarked through the BIS authorised Assaying and Hallmarking Centres (A&H Centre).BIS which has been established through the Bureau of Indian Standards Act, 201618 (BIS) is theNational Standard Body of India forstandardisation, certification, and testing and certification of goods. BIS provides traceability and tangibility benefits to the national economy by safeguarding reliable consumer goods; mitigating health risks to buyers; supporting foreign trade alternatives; controlling the proliferation of varieties. There are guidelines that stipulate the procedure for grant, operation, renewal, and cancellation of the certificate of registration. The certificate of registration issued by the BIS for sale of hallmarked articles shall be displayed prominently in the sales outlet19. The consumer is entitled to compensation from the jeweller in case of failure of the sample which has been sold by him.
Hallmarking, why is it necessary: The precise assessment and formal recording of the proportional amount of precious metal in items is known as hallmarking. As a result, hallmarks are official markings that are employed as a guarantee of the purity or fineness of precious metal goods in several nations. Under this system, BIS grants jewellers registered status under the hallmarking scheme. Any of the BIS approved Assaying and Hallmarking Centres can have their jewellery hallmarked by BIS certified jewellers.
From 1-6-2021, the Government has made hallmarking of gold jewellery and antiquities compulsory.20 The goal of mandatory hallmarking of gold and silver ornaments is to safeguard consumers from being duped.
► Protection of jewellery— Global trend
United States: Under the US law, the Copyright Act of 1976 gives a work copyright protection from the moment it is created (as long as it is original and has been fixed in a physical medium of expression) and allows a work to be legally registered with the copyright office. The copyright office needs proof of originality as outlined in the Copyright Act and the Supreme Court case Feist Publications Inc. v.Rural Telephone Service Co. Inc.21 to acquire registration.
While copyright generally protects a jewellery design from the start, a trademark can only protect a design once it has been on the market for at least five years and the maker or designer has invested a significant amount of time and money into it.
In Yurman Design v.PAJ22 the plaintiff “Yurman” wanted copyright and trade dress protection for whole range of products it was argued that PAJ had violated copyrights and trade dress rights for certain jewellery which had “the creative combination of cable (jewellery) with other components” the Court held the trade dress claim was excessively broad and did not properly explain the precise common features intended to be protected. Consequently, the Court determined that, while Yurman’s copyright in its distinctive cable braided pattern was sufficiently unique, it failed to define the components and qualities that distinguish its trade dress thus, it was awarded copyright but not the trade dress.
Later in Yurman Design v.Golden Treasure Imports Inc.23 Yurman filed another trade dress infringement suit against a different defendant for identical designs. Yurman did not attempt to protect the trade dress of a whole line of jewellery without referring to specific parts, but rather laid out all the numerous designs as contained in specific pieces of jewellery, trying to protect the trade dress of each item separately. In response, the Court determined that its description was enough and gave it protection. Thus, while one aspect of jewellery design may appear in several pieces from the same source, owners seeking trade dress protection should specify the protection sought in each unique design in the collection.
United Kingdom: Every object sold as precious metal (gold, silver, or platinum) in the United Kingdom must be examined and hallmarked by an independent third-party assay office to ensure that the metal is of the quality indicated by the retailer, according to the British Hallmark Act, 1973. Copyright protection is available in the United Kingdom as long as your jewellery design is substantially distinctive and unique. In order to defend the rights, there is a need to establish ownership as well as the date your jewellerywas created. Designs are automatically protected by “design right” which means that using them for any purpose without the owner's consent would be a patent infringement. Any violation of design or copyright (such as by other jewellers) would empower the IP holder to file a civil lawsuit to recover damages. Unregistered design rights are only granted to three-dimensional designs in the United Kingdom. To protect a two-dimensional design, the intellectual property office (IPO) recommends filing a registration application with the UK Designs Registry.
► Contractual protection
For a jewellery line, there maybe a case where they maybe hiring third-party contractors for different tasks such as advertisement, celebrity endorsement, designers, manufacturers, etc. A good and watertight agreement is the need of the hour in such transactions as it is not just a question of money but also of goodwill, quality, and four cornered protection. A poorly drafted contract or an arrangement without a contract may lead to either poor services or any liability which is uncalled for. Hence, while developing a business and even till the end, rock solid contracts are the most important factor to be taken care of. A contract not only ensures clarity of terms but also givesjewellers a way to transcribe the best practices in the industry in clear words. More often than not, the jewellery industry, even after being one of the most lucrative industries, faces a good attrition rate. Hence, it becomes far more important for an employer to ensure effective employment agreements and policies to be in place as it will not only ensure fair terms with employees but will also help in protecting the designs and secrets of a jeweller and its business.
The abovementioned IP rights protect the interests of the creators while the rights of the buyers are protected by bodies like BIS through tools like Hallmarking. Under the Indian regime, we can claim copyright on jewellery sketches/drawings under the copyright laws. When it comes to the DesignsAct, the pattern, form, and colour of jewellery can all be claimed as protected. The TM Act protects the name, logo, domain name of a jewellery brand. Patent law may protect the unique process of making a piece of jewellery and geographical indication may protect traders of a particular area producing a unique set of articles which represents their area. Almost all countries have a common basis for granting IP rights for jewellery i.e. originality but there are different tools through which they can be protected, and damages granted for breach vary exponentially.
The monetary penalty in countries like UK and US seems to be exponentially higher as compared to India and this shall also be followed in India to deter wilful infringers. Also, the jurisprudence regarding e-commerce seems much more advanced in countries like US and UK as they seem to provide better protection to consumers. Thus, the Indian legislature as well, as the judiciary, shall thrive to bring the relevant jurisprudence at par with modern needs. A need for such protection and safeguard arises more as industry and the methods of doing business are evolving and transitioning from one mode to another. A consumer can now at its comfort, see, explore, and purchasejewellery articles from sellers all over the country. Such a transition is not only opening new doors and new opportunities but also inviting new and advanced threats to businesses. These are the times where it is important for a jeweller to upscale his/her business with the right legal and IT protections. These times also call for industry bodies and the lawmakers to make more stringent laws and policies for ensuring the industry thrives in the long run.
† Co-Founding Partner at Chambers of Jain and Kumar. Author can be reached at firstname.lastname@example.org.
†† Partner at Chambers of Jain and Kumar. Author can be reached at email@example.com.
The views expressed in this paper are the personal views of the authors.
4. Trade and Merchandise Marks Act, 1958 under clause (d) of S. 9 refused the registration of surname as trade mark.
5. Mahendra and Mahendra Seeds (P) Ltd. v. Mahindra & Mahindra Ltd., 2002 OnLine Guj 324.
6. Prathiba M. Singh v. Singh and Associates, 2014 SCC OnLine Del 1982.
8. Ritika (P) Ltd. v. Biba Apparels (P) Ltd., 2016 SCC OnLine Del 1979.
12. Patents Act, 1970, S. 2.
13. Tabitha Cassidy, “US Jewelery Retailers Grow Online Sales 22.5% in 2020”,DigitalCommerce 360, accessible at <https://www.digitalcommerce360.com/article/jewelry-ecommerce-sales/>.
14. 2018 SCC OnLine Del 12215.
15. Michael Pearl, “Pandemic Creates E-commerce Risks for Jewelers”, accessible at <https://www.foason.com/2020/10/20/pandemic-creates-e-commerce-risks-for-jewelers/>
16. Nishtha Grover, “Valentine’s Day Scam: Fake Website Imitates Jewellery Brand, Phishes Couples”, accessible at <https://www.hindustantimes.com/lifestyle/festivals/valentines-day-scam-fake-website-imitates-jewellery-brandphishes-couples-101613124383427.html>.
17. Seth Adler, “Jewellery Chain Claire's Hit by e-Commerce Mageware Attack”, accessible at <https://www.cshub.com/attacks/articles/jewelry-chain-claires-hit-by-ecommerce-mageware-attack>.
18. Bureau of Indian Standards Act, 2016.
20. Mandatory Hallmarking Order, dated 1-6-2021>, accessible at <https://bis.gov.in/index.php/hallmarkingoverview/mandatory-hallmarking-order/>
21. 1991 SCC OnLine US SC 46 : 113 L Ed 2d 358 : 499 US 340 (1991).
22. 98 Civ. 8697 (RWS) (SDNY 11-7-2001).
23. No. 00 Civ. 0202 (JGK) (SDNY 30-7-2003).