IPRs IN THE TEXTILE &APPARELS SECTOR
DESIGN RIGHTS HAVE ANIMPORTANT   ROLE   TOPLAY IN THE FASHIONINDUSTRY
POSSIBLE REASONS WHY IPRs ARETHOUGHT TO BE NOT APPLICABLETO THE FASHION INDUSTRY?• The nature of fashion design necessaril...
Why is it important for the fashion     community to think of design                protection?• Design protection is as a...
IPRs & the fashion industry• If China’s strength lies in volumes, India’s lies in  value addition• The recognition of the ...
IPRs & the fashion industry• Design rights & IPRs in general, recognise  & harness individual creativity & help  PROFIT fr...
“DESIGNS”                   Purely            Designs withFunctional /               artistic works   eye-appeal & capable...
A  “DESIGN”    UNDER                                      THEDESIGNS ACT, 2000• 2D or 3D features of shape, configuration,...
DESIGNS CAN BE 2D OR 3D OR  COMBINATION OF BOTH• Surface pattern (2D)• Cut of the garment  (3D)
DESIGNS EXCLUDED FROM            PROTECTION• Not NEW or ORIGINAL• If the design has been disclosed to the public  in India...
“NEW OR ORIGINAL”• “Original”: Means that it must originate from the  creator• “New”: May involve a design which is known ...
THE DEGREE OF NOVELTY REQUIRED• “New or original” does not simply mean  different• A trade variant of an old design does n...
“TRADE VARIANTS”• “It cannot be said that there is a new  design every time a coat or waistcoat is  made with a different ...
WHAT IS “NOVELTY”• Strikingly different appearance• Pattern made up of old features but  resulting combination with striki...
Example of “Novelty”• Wallpaper  Manufacturers  Limited case• Wallpaper     pattern  held to be a new and  original combin...
Requirement of “non-disclosure”• Prior to application, one should be careful  not to launch the design into the market• Th...
WHAT IF YOUR DESIGN IS     ALSO FUNCTIONAL?• The intent of the Designs Act is to protect  shapes & not functions• But, the...
WHY REGISTER YOUR DESIGN? –        DESIGNS ACT, 2000• Statutory right – accrues only on registration -  territorial• Right...
CLASSIFICATION ACCORDING TO GOODS  • Registration is in relation to goods  • 32 classes  • Protection confined to class fo...
WHO CAN APPLY FOR A     DESIGN REGISTRATION?• If design has been specially commissioned  for good consideration, the perso...
Importance of getting clarity on  ownership of the “DESIGN”• In the context of joint design efforts, who owns  the design ...
THE OVERLAP BETWEEN COPYRIGHT &DESIGN LAWS  • Purely artistic works, for example, paintings    and sketches are protected ...
THE DESIGN DEVELOPMENT PROCESS• For example, TEXTILES:Sketches      Engineered templatesFilm tracing      ScreensEngraving...
COPYRIGHT & DESIGN LAWS• A distinction has thus sought to be drawn  between “purely artistic works” and works  which are c...
“Artistic work” – Overlap of Rights?• Copyright     does    not  subsist     in     design  registered    under   the  Des...
Copyright & Designs Law• However, it may not be practically possible for a  designer to get all his designs registered. Al...
Copyright & Designs Law• It is therefore important to maintain  documentation and records at every  stage of product desig...
DESIGN Vs. COPYRIGHT     DESIGN                 COPYRIGHTComplete monopoly       Only protects against                    ...
DESIGN AS A TRADEMARK• The     “Epi”   style  leather design of  Louis         Vuitton  Malletier• Protected   as    a  tr...
Licensing of a Design• The design can be licensed to third parties to  exploit markets or commercialise it on a scale  muc...
PIRACY OF REGISTERED DESIGN• Anyone who applies or causes to be applied to  any article the design or any fraudulent or  o...
Example of infringement of       registered design• Birkin v. Pratt• Lace pattern was  held to have  been infringed
YSL v. Ralph Lauren• YSL was awarded  damages for Ralph  Lauren’s  infringement of the  design rights in YSL’s  design of ...
The Suneet Verma controversy –        Lessons to be learnt• Need to assert rights  over your designs –  think that you are...
The Suneet Verma controversy –        Lessons to be learnto At the same time, if  you need to use a  design,     do      d...
Things to remembero The Design right needs to be used to support  and leverage the enormous amount of creativity  and pote...
Things to remember• Till the time you file a design application, treat it as  confidential when you need to disclose it to...
Things to remember• When using designs, do your due  diligence on the ownership of these  designs – give credit, take lice...
Things to remembero The fashion design community should  lobby and build pressure on legislators  and the government to pr...
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Ip rs in fashion industry1 [compatibility mode]

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Ip rs in fashion industry1 [compatibility mode]

  1. 1. IPRs IN THE TEXTILE &APPARELS SECTOR
  2. 2. DESIGN RIGHTS HAVE ANIMPORTANT ROLE TOPLAY IN THE FASHIONINDUSTRY
  3. 3. POSSIBLE REASONS WHY IPRs ARETHOUGHT TO BE NOT APPLICABLETO THE FASHION INDUSTRY?• The nature of fashion design necessarily attracts imitation – “fashion following”• The transitory/seasonal nature of the fashion industry & markets• The fear that protection may paralyse the fashion industry by creating monopolies
  4. 4. Why is it important for the fashion community to think of design protection?• Design protection is as applicable to the fashion industry as in any other business segment• In the fashion industry, it is the appearance of the product that is one of the most crucial determining factors in consumer choice• A unique & innovative design can thus be the USP and the linchpin for your business
  5. 5. IPRs & the fashion industry• If China’s strength lies in volumes, India’s lies in value addition• The recognition of the role of the DESIGNER & the immense value of the INTANGIBLE that they create• International experience shows that protection stimulates rather than stunt the fashion industry – eg., France
  6. 6. IPRs & the fashion industry• Design rights & IPRs in general, recognise & harness individual creativity & help PROFIT from it• Understanding the boundaries of design protection also helps in not infringing other’s rights
  7. 7. “DESIGNS” Purely Designs withFunctional / artistic works eye-appeal & capable ofutilitarian Industrial application Patents Copyright DesignsAct, 1970 Act, 1957 Act, 2000
  8. 8. A “DESIGN” UNDER THEDESIGNS ACT, 2000• 2D or 3D features of shape, configuration, pattern, ornament, composition of lines, colours• Applied to any article by any industrial process or means• The finished article appeals to the eye• Does not include anything which is in substance a mere mechanical device• Not an artistic work or trademark
  9. 9. DESIGNS CAN BE 2D OR 3D OR COMBINATION OF BOTH• Surface pattern (2D)• Cut of the garment (3D)
  10. 10. DESIGNS EXCLUDED FROM PROTECTION• Not NEW or ORIGINAL• If the design has been disclosed to the public in India or elsewhere (exception is provided for exhibitions)• Not significantly distinguishable from known designs or a combination of known designs
  11. 11. “NEW OR ORIGINAL”• “Original”: Means that it must originate from the creator• “New”: May involve a design which is known but is applied for the first time to that article• But over the years, the test has become NEW AND ORIGINAL
  12. 12. THE DEGREE OF NOVELTY REQUIRED• “New or original” does not simply mean different• A trade variant of an old design does not make it novel• Substantial novelty required
  13. 13. “TRADE VARIANTS”• “It cannot be said that there is a new design every time a coat or waistcoat is made with a different slope or different number of buttons…to hold that would be to paralyse industry” - Le May v. Welch• Thus, trifling variations/immaterial details would not be considered “NEW”
  14. 14. WHAT IS “NOVELTY”• Strikingly different appearance• Pattern made up of old features but resulting combination with strikingly different appearance can be novel
  15. 15. Example of “Novelty”• Wallpaper Manufacturers Limited case• Wallpaper pattern held to be a new and original combination of known designs
  16. 16. Requirement of “non-disclosure”• Prior to application, one should be careful not to launch the design into the market• The Design, prior to the filing of the application should be treated as confidential information
  17. 17. WHAT IF YOUR DESIGN IS ALSO FUNCTIONAL?• The intent of the Designs Act is to protect shapes & not functions• But, there may be a design which also has functional features• Test is to see if design is solely dictated by function. If yes, it will not be registrable
  18. 18. WHY REGISTER YOUR DESIGN? – DESIGNS ACT, 2000• Statutory right – accrues only on registration - territorial• Right to prevent all other from producing, importing, selling or distributing products having an identical appearance or a fraudulent or obvious imitation• Monopoly Period of 10 years extendable by 5• Gives you a Unique Selling Point (USP)• Is an asset & can be licensed
  19. 19. CLASSIFICATION ACCORDING TO GOODS • Registration is in relation to goods • 32 classes • Protection confined to class for which registered • More than one design may be registered as a set of articles of same character
  20. 20. WHO CAN APPLY FOR A DESIGN REGISTRATION?• If design has been specially commissioned for good consideration, the person for whom it is executed• An assignee or exclusive licensee• In any other case, the AUTHOR
  21. 21. Importance of getting clarity on ownership of the “DESIGN”• In the context of joint design efforts, who owns the design should be spelt out in the contract• Also, where a part of the design process is sourced out, it should be spelt out• While designing for someone else, be clear in the contract on who owns the design
  22. 22. THE OVERLAP BETWEEN COPYRIGHT &DESIGN LAWS • Purely artistic works, for example, paintings and sketches are protected under the Copyright Act • The design development process involves the development of a number of artistic works – can copyright protection be claimed over them?
  23. 23. THE DESIGN DEVELOPMENT PROCESS• For example, TEXTILES:Sketches Engineered templatesFilm tracing ScreensEngraving/printing Fabrication• Each on of the above can qualify as “artistic works” under the Copyright Act, 1957
  24. 24. COPYRIGHT & DESIGN LAWS• A distinction has thus sought to be drawn between “purely artistic works” and works which are commercialised by industrial application• The rationale is that when artistic works are commercialised, they do not deserve the protection granted under the Copyright Act and come within purview of the Designs Act
  25. 25. “Artistic work” – Overlap of Rights?• Copyright does not subsist in design registered under the Designs Act• Design capable of being registered, but which has not been so registered - copyright shall cease as soon as any article to which the design has been applied more than fifty times by an industrial process
  26. 26. Copyright & Designs Law• However, it may not be practically possible for a designer to get all his designs registered. Also, all designs may not be “capable of registration” under the Designs Act• It may be argued that a design may be capable of protection under Copyright Act on the basis of the underlying artistic works (i.e., the sketches, engravings, prototypes, etc.) though Section 15 (2) remains a bar
  27. 27. Copyright & Designs Law• It is therefore important to maintain documentation and records at every stage of product design and development as this may help in claiming protection for a design under the Copyright Act, 1957
  28. 28. DESIGN Vs. COPYRIGHT DESIGN COPYRIGHTComplete monopoly Only protects against copyingNeed to register to Subsists inherently claim protectionHas to be “NEW” No requirement for noveltyMaximum 15 years Life of author + 50 years Only in respect of Is not goods specificgoods registered for
  29. 29. DESIGN AS A TRADEMARK• The “Epi” style leather design of Louis Vuitton Malletier• Protected as a trademark against piracy by the Delhi High Court
  30. 30. Licensing of a Design• The design can be licensed to third parties to exploit markets or commercialise it on a scale much bigger than what can the resources of the author• Essential to specify in the license- the term, territory, amount of royalty & type of products for which design can be used by licensee
  31. 31. PIRACY OF REGISTERED DESIGN• Anyone who applies or causes to be applied to any article the design or any fraudulent or obvious imitation of it• To see whether the essential design features are substantially similar between the article and the design representation• It is the overall general impression of similarity which is taken into account
  32. 32. Example of infringement of registered design• Birkin v. Pratt• Lace pattern was held to have been infringed
  33. 33. YSL v. Ralph Lauren• YSL was awarded damages for Ralph Lauren’s infringement of the design rights in YSL’s design of its tuxedo dress
  34. 34. The Suneet Verma controversy – Lessons to be learnt• Need to assert rights over your designs – think that you are creating Intellectual Property from Day 1 of product design & development and not just when your design gets copied
  35. 35. The Suneet Verma controversy – Lessons to be learnto At the same time, if you need to use a design, do due diligence over its ownership – give credit – take a license if you do need to use it
  36. 36. Things to remembero The Design right needs to be used to support and leverage the enormous amount of creativity and potential of Indian designers – time has come to actively harness it – don’t just wake up when your design gets copied, start thinking about it from Day 1 of product creation and developmento A unique design for which you see commercial value and which you intend to commericalise, get it registered as a design
  37. 37. Things to remember• Till the time you file a design application, treat it as confidential when you need to disclose it to wholesalers/exporters/in a portfolio• Have clarity on the ownership of the designs that you create by entering into contracts that spell out who owns the designso Maintain documentation and records at every stage of product development – helps you claim copyright even if your design is unregistered
  38. 38. Things to remember• When using designs, do your due diligence on the ownership of these designs – give credit, take licenses• Commericalise your design through license arrangements
  39. 39. Things to remembero The fashion design community should lobby and build pressure on legislators and the government to provide for an “unregistered design right” as exists in the European Union

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