3. POSSIBLE REASONS WHY IPRs ARE
THOUGHT TO BE NOT APPLICABLE
TO 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. 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. 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. 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. “DESIGNS”
Purely Designs with
Functional /
artistic works eye-appeal & capable of
utilitarian Industrial application
Patents Copyright Designs
Act, 1970 Act, 1957 Act, 2000
8. A “DESIGN” UNDER THE
DESIGNS 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. DESIGNS CAN BE 2D OR 3D OR
COMBINATION OF BOTH
• Surface pattern (2D)
• Cut of the garment
(3D)
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. “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. 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. “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. WHAT IS “NOVELTY”
• Strikingly different appearance
• Pattern made up of old features but
resulting combination with strikingly
different appearance can be novel
15. Example of “Novelty”
• Wallpaper
Manufacturers
Limited case
• Wallpaper pattern
held to be a new and
original combination
of known designs
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. 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. 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. 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. 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. 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. 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. THE DESIGN DEVELOPMENT PROCESS
• For example, TEXTILES:
Sketches Engineered templates
Film tracing Screens
Engraving/printing Fabrication
• Each on of the above can qualify as “artistic
works” under the Copyright Act, 1957
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. “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. 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. 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. DESIGN Vs. COPYRIGHT
DESIGN COPYRIGHT
Complete monopoly Only protects against
copying
Need to register to Subsists inherently
claim protection
Has to be “NEW” No requirement for
novelty
Maximum 15 years Life of author + 50 years
Only in respect of Is not goods specific
goods registered for
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. 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. 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. Example of infringement of
registered design
• Birkin v. Pratt
• Lace pattern was
held to have
been infringed
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. 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. The Suneet Verma controversy –
Lessons to be learnt
o 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. Things to remember
o 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
development
o A unique design for which you see commercial
value and which you intend to commericalise,
get it registered as a design
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 designs
o Maintain documentation and records at every stage of
product development – helps you claim copyright even
if your design is unregistered
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. Things to remember
o 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
