ip rs in fashion industry1 [compatibility mode]

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 necessarily attractsimitation – “fashion following”

• The transitory/seasonal nature of the fashionindustry & markets

• The fear that protection may paralyse thefashion industry by creating monopolies

Why is it important for the fashion community to think of design

protection?

• Design protection is as applicable to the fashionindustry as in any other business segment

• In the fashion industry, it is the appearance ofthe product that is one of the most crucialdetermining factors in consumer choice

• A unique & innovative design can thus be theUSP and the linchpin for your business

IPRs & the fashion industry

• If China’s strength lies in volumes, India’s lies invalue addition

• The recognition of the role of the DESIGNER &the immense value of the INTANGIBLE thatthey create

• International experience shows that protectionstimulates rather than stunt the fashion industry– eg., France

IPRs & the fashion industry

• Design rights & IPRs in general, recognise& harness individual creativity & helpPROFIT from it

• Understanding the boundaries of designprotection also helps in not infringingother’s rights

“DESIGNS”

Functional /utilitarian

Patents Act, 1970

Purely artistic works

Copyright Act, 1957

Designs with eye-appeal & capable of

Industrial application

Designs Act, 2000

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 mechanicaldevice

• Not an artistic work or trademark

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 publicin India or elsewhere (exception is provided forexhibitions)

• Not significantly distinguishable from knowndesigns or a combination of known designs

“NEW OR ORIGINAL”

• “Original”: Means that it must originate from thecreator

• “New”: May involve a design which is known butis applied for the first time to that article

• But over the years, the test has become NEWAND ORIGINAL

THE DEGREE OF NOVELTY REQUIRED

• “New or original” does not simply meandifferent

• A trade variant of an old design does notmake it novel

• Substantial novelty required

“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”

WHAT IS “NOVELTY”

• Strikingly different appearance

• Pattern made up of old features butresulting combination with strikinglydifferent appearance can be novel

Example of “Novelty”

• WallpaperManufacturersLimited case

• Wallpaper patternheld to be a new andoriginal combinationof known designs

Requirement of “non-disclosure”

• Prior to application, one should be carefulnot to launch the design into the market

• The Design, prior to the filing of theapplication should be treated asconfidential information

WHAT IF YOUR DESIGN IS ALSO FUNCTIONAL?

• The intent of the Designs Act is to protectshapes & not functions

• But, there may be a design which also hasfunctional features

• Test is to see if design is solely dictated byfunction. If yes, it will not be registrable

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 identicalappearance 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

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 setof articles of same character

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

Importance of getting clarity on ownership of the “DESIGN”

• In the context of joint design efforts, who ownsthe design should be spelt out in the contract

• Also, where a part of the design process issourced out, it should be spelt out

• While designing for someone else, be clear inthe contract on who owns the design

THE OVERLAP BETWEEN COPYRIGHT & DESIGN LAWS

• Purely artistic works, for example, paintingsand sketches are protected under theCopyright Act

• The design development process involves thedevelopment of a number of artistic works –can copyright protection be claimed overthem?

THE DESIGN DEVELOPMENT PROCESS

• For example, TEXTILES:

Sketches Engineered templates Film tracing Screens Engraving/printing Fabrication

• Each on of the above can qualify as “artisticworks” under the Copyright Act, 1957

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

“Artistic work” – Overlap of Rights?

• Copyright does notsubsist in designregistered under theDesigns Act

• Design capable of beingregistered, but which hasnot been so registered -copyright shall cease assoon as any article towhich the design hasbeen applied more thanfifty times by anindustrial process

Copyright & Designs Law

• However, it may not be practically possible for adesigner 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 capableof protection under Copyright Act on the basis ofthe underlying artistic works (i.e., the sketches,engravings, prototypes, etc.) though Section 15(2) remains a bar

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

DESIGN Vs. COPYRIGHT

DESIGN COPYRIGHT

Complete monopoly Only protects against copying

Need to register to claim protection

Subsists inherently

Has to be “NEW” No requirement for novelty

Maximum 15 years Life of author + 50 years

Only in respect of goods registered for

Is not goods specific

DESIGN AS A TRADEMARK

• The “Epi” styleleather design ofLouis VuittonMalletier

• Protected as atrademark againstpiracy by the DelhiHigh Court

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

PIRACY OF REGISTERED DESIGN

• Anyone who applies or causes to be applied toany article the design or any fraudulent orobvious imitation of it

• To see whether the essential design featuresare substantially similar between the articleand the design representation

• It is the overall general impression of similaritywhich is taken into account

Example of infringement of

registered design

• Birkin v. Pratt

• Lace pattern washeld to havebeen infringed

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

The Suneet Verma controversy –

Lessons to be learnt

• Need to assert rightsover your designs –think that you arecreating IntellectualProperty from Day 1of product design &development and notjust when your designgets copied

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

Things to remember

o The Design right needs to be used to supportand leverage the enormous amount of creativityand potential of Indian designers – time hascome to actively harness it – don’t just wake upwhen your design gets copied, start thinkingabout it from Day 1 of product creation anddevelopment

o A unique design for which you see commercialvalue and which you intend to commericalise,get it registered as a design

• Till the time you file a design application, treat it asconfidential when you need to disclose it towholesalers/exporters/in a portfolio

• Have clarity on the ownership of the designs that youcreate by entering into contracts that spell out whoowns the designs

o Maintain documentation and records at every stage ofproduct development – helps you claim copyright evenif your design is unregistered

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

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

Things to remember