IPR

Fashion Industry: Intellectual Property Right (IPR)

The Fashion Industry is an Intellectual property intensive industry as it involves continuous creation of new and innovative ideas that are commercially exploited. The brand is protected under trademark law, the floral design or any other like pattern on the dress is a design and can be protected under the Designs law and any original artistic work can be protected under the Copyright law.

Design law protects original prints and patterns, unique colour arrangements and novel combinations of elements (protectable or non-protectable) used on apparel and accessories but, in most cases, not apparel designs themselves. How effective is the design law or copyright law in protecting the work of fashion designer either fashion apparel as a whole or its shape, feature, pattern or any other such distinctive feature forming part of apparel?

The Design Act, 2000 defines design as:

d) “design” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in two dimensional or three dimensional or in both forms, by any industrial process or means, whether manual, mechanical or chemical, separate or combined, which in the finished article appeal to and are judged solely by the eye; but does not include any mode or principle of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.

Hon’ble Delhi High Court has summarised the nature and scope of the Design Act, 2000 under para 12 in case of M/S Micolube India Limited vs Rakesh Kumar Trading trading as Saurabh Industries and others (I.A. No.9537/2011 & I.A. No. /2011 (un-numbered) in CS (OS) No.1446 /2011) and remarked as follows:

  1. The conjoint reading of the aforementioned provisions would reveal that the Design Act is a complete code itself which provides that there is a condition for certificate of registration of the said design u/s 9 and the said design upon registration confers the copyright in the said design for a period of 10 years as envisaged u/s 11 and for further renewable of five years under the said provision. The said term of the Design also indicates that the design right is a statutorily conferred right for limited period and there is no room of any other right to exist except the one conferred by the Act. Likewise, Section 22 provides remedy for piracy of a registered design wherein the said piracy will only happen during the existence of copyright in the said design.
  2. All these provisions provided under the Act are indicators to the effect that infringement/ piracy can only be of a registered design and the said remedy is available during the existence of the said copyright as mentioned u/s 11 of the Act. What follows from the above discussions is that there is no remedy, which is being saved either in the form of common law of passing off or otherwise on the basis of any equity which can be said to be a legally enforceable right available to the party dehors remedy which is available in the self-contained code which is The Designs Act, 2000.

In case of Microfibres Inc vs Girdhar And Co. And Ors (RFA (OS) NO.25/2006), the Hon’ble Delhi High Court while reviewing the single judge order reviewed the scope of the Copyright Act, 1957 vis a vis the Design Act, 2000 in respect of alleged artistic work on upholstery fabrics. The protection of artistic work under two acts was summarised (para 45(i)) as follows:

“If the design is registered under the Designs Act, the Design would lose its copyright protection under the Copyright Act. If it is a design registrable under the Designs Act but has not so been registered, the Design would continue to enjoy copyright protection under the Act so long as the threshold limit of its application on an article by an industrial process for more than 50 times is reached. But once that limit is crossed, it would lose its copyright protection under the Copyright Act. This interpretation would harmonize the Copyright and the Designs Act in accordance with the legislative intent.

Fabric prints can have copyright protection if the print found on the fabric of clothing is copyrightable to the extent it meets the three requirements for protection: (1) fixation, (2) expression, and (3) originality, since fabric patterns exist separately from the utilitarian nature of the clothing.

Legally, it doesn’t matter whether a design is printed on a piece of fabric or printed on a canvas and displayed in a museum, as long as it meets the minimum requirements for copyright protection, it’s protected.

In case of Rajesh Masrani vs Tahiliani Design Pvt. Ltd. (FAO (OS) No.393/2008) formulated the following issue (para 10) to decide appeal against injunction order, whether textile designs are artistic work or not:

  1. We have heard learned counsel for the parties and have also gone through the relevant pleadings and documents. We feel that the main controversy that arises in the present case is as under:- 

a) Whether the pattern made by the plaintiff on the fabric is ‘design’ or ‘artistic work’?

b) Whether the product in question is the subject matter of artistic work within the meaning of Copyright Act, 1957 as alleged by the plaintiff?

c) Whether the copyright subsists in the plaintiff’s agreements in view of Section 15 of the Copyright Act, 1957?

d) Whether the registration of the work under the Copyright Act is compulsory or registration is not a condition precedent for maintaining the suit for infringement of copyright.

The appeal bench concluded the following after considering the detail process for development of artistic work in instant case:

  1. We are, therefore, of the opinion that the plaintiffs’ work is entitled for protection under Section 2(c) of the copyright Act and is an original artistic work. Since the work is an ‘artistic work’ which is not covered under Section 2(d) of the Designs Act, 2000, it is not capable of being registered under the Designs Act and the provisions of Section 15(2) is not applicable.

TRADE MARK

The Trademark law does not provide protection for fashion designs per se. Instead, trademark law protects brand names, logos, symbols and other optional elements of apparel and accessories, and Design law protects the design, packaging or appearance of apparel and accessories, solely to the extent they identify the source and origin of such products. For example, the brand name and logo hang tag and distinctive pocket stitching on a pair of jeans could be registered as protectable trademarks, and the unique shape of a dress could be registered as protectable design.

Based on existing Indian laws, fashion designers should seek to maximize their protection by (i) Registering copyrights for their original prints and patterns as artistic work under the Copyrights Act (ii) Applying for a design patent for new and nonobvious ornamental fashion designs when the useful life of the design is expected to last more than a few seasons (10+5 years) and (iii) Registering for trademark and/or trade dress protection for brand names, logos etc.

The term of Copyright is one of the longest. Term of a trademark is perpetual subject to periodic renewal and no cancellation action. Designs have the shortest term of 15 years–10 years further extendable to another 5. However, the moment the artwork is applied to any article to give the article an aesthetic appeal, and once the article is commercialized and sold in more than 50 numbers of units, under Section 15(2) of the Copyright Act, the artwork loses its copyright and comes under the realms of the design law. Protection in copyright is granted from the moment it is created whether registered or not. Under Designs Act, 200 protections are available to a person once he applies and thereafter granted a registration for his design. The Act envisages bars in displaying the article in question to general public before the application for grant of Designs registration as it will destroy the novelty criteria.

Rajni Sinha

Advocate, Bombay High Court

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IPR

Dilution of Trade mark

“Trademark dilution” involves an unauthorized use of another’s trademark for goods and services that do not compete with, and have little connection with, those of the original trademark owner’s goods and services.

The section 29(4) of the Trade Marks Act, 1999 encompasses the principle of trademark dilution, which reads as follows:

(4) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which—

(a) is identical with or similar to the registered trade mark; and

(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and

(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

The entire structure of Section 29(4) is different from the earlier part, and in effect expresses Parliamentary intent about the standards required for a plaintiff to establish dilution of its trademark, in relation to dissimilar goods or products. Under Section 29 (4) apart from the similarity of the two marks (or their identity) that his (or its) mark –

(i) has a reputation in India;

(ii) the use of the mark without due cause;

(iii) the use (amounts to) taking unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark.

Importantly, there is no presumption about trademark infringement, even if identity of the two marks is established, under Section 29 (4).

The cause of action for trademark dilution traces its roots to Frank Schechter’s 1927 article in the Harvard Law Review, The Rational Basis of Trademark Protection. In this article, Schechter observed that many courts had grown impatient with “old theories of trademark protection,” which he believed were insufficient to “serve the needs of modern business.”

The Hon’ble Supreme Court has summarised the discussion on dilution by McCarthy in following terms:-

a) The traditional likelihood of confusion test applies to passing off.

b) If a mark is a well-known mark, then the argument of dilution is to be considered in the absence of confusion.

c) Dilution is a doctrine which should be strictly applied.

d) Standard of distinctiveness required to protect a mark from dilution is very high.

e) Not every trade mark can be protected against dilution.

f) If a mark enjoys a regional reputation it does not deserve protection under the law of dilution.

g) A reputation on a national scale, especially while testing the mark for unrelated goods, is required to be protected under dilution.

(T.V. Venogopal vs Ushodaya Enterprises Ltd. & Anr)

In case of trade mark dilution allegation the plaintiff has to fulfil a more stringent test (than the deceptive similarity standard of mark) of proving identity or similarity. In the case of logos and other marks, the application of the “identity” or “similarity” test has to result in a conclusion that the rival marks bear a very close resemblance, seen from an overall perspective. Thus, when considering bringing dilution claims, trademark holders should cast a wider net, looking to factors beyond similarity of marks, and prepare their cases accordingly.

Forms of Dilution:

  1. Blurring: weakening of the distinctiveness of a famous mark. This is the traditional notion of dilution—using an identical or virtually identical mark on or in connection with goods and/or services that may be completely different from and unrelated to the plaintiff’s goods and/ or services. The belief is that a mark that is highly similar or identical to the plaintiff’s unique, distinctive and well-known mark can detract from consumers’ strong association of the plaintiff’s mark with the plaintiff’s goods and services.
  2. Tarnishment: Weakening of the distinctiveness of a famous mark, usually through inappropriate or unflattering associations. Examples include using a similar mark, or a term that plays on one’s mark, in association with offensive content, with subject matter critical of the mark owner and its beliefs or philosophies. Tarnishment can also involve using the mark to attract the mark owner’s customers to directly criticize or attack the mark owner or its product or service.
  3. Free-riding : Enjoying the benefit of positive association with a well-known mark and its prestige. It is sometimes referred to as unfair advantage. Activity that constitutes free-riding does not have to create confusion in the marketplace or cause actual harm to the mark owner.

In India prior to the Trade Marks Act, 1999, the trade mark dilution case was dealt under passing off action. In case of Kirloskar Diesel Recon Pvt. Ltd and Ors vs Kirloskar Proprietary Ltd. and Ors (AIR 1996 Bom 149), it was held that passing off action lies even for dissimilar goods and services. It was held as follows:

  1. In the case of trading name which has become almost a household word and under which trading name a variety of activities are undertaking, a passing off can successfully lie if the defendant has adopted identical or similar trading name and even when the defendant does not carry on similar activity. Even if the defendant’s activities in such circumstances are remote, the same are likely to be presumed a possible extension of plaintiff’s business or activities. In the instant case, the Respondents have established that word ‘Kirloskar’ has become a household word and their businesses cover variety of activities and that there is even a common connection with some activities of the respondents and activities of the Appellants……………….

The Delhi high court in the Daimler Benz Aktiegesellschft and Anr. V. Hybo Hindustan (AIR 1994 Delhi 236) it was held as follows:

In my view, it is but right that the defendant should be restrained from using the word “Benz” with reference to any underwear which is manufactured by them, and in my view, injunction should issue, restraining the defendant to cease and desist from carrying on trade in any undergarments in the name of “Benz” and “Three Pointed Human Being in a Ring”, forthwith.

In case of Larsen & Toubro Ltd. vs Lachmi Narain Trades. & Ors (149 (2008) DLT 46) it was held as follows:

12…………….As rightly held by the learned Single Judge the test of “field of activity” is no more valid. The question really is one of real likelihood of confusion or deception among the consumers and the resultant damage to the plaintiff. The legal position on the subject is fairly well settled by a long line of decisions rendered by this Court as also the Apex Court.

……………………………………………..

  1. We have, in the light of the above pronouncements, no difficulty in holding that the dissimilarity in some of the products in which the parties trade does not make any material difference insofar as the grant or refusal of injunction against the defendants in the facts and circumstances of this case are concerned.

USA Judgement:

The USA has special law for trade mark dilution in form of Trademark Dilution Revision Act of 2006 (TDRA).

In case of Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., the Ninth Circuit held that a showing of dilution does not require “that the junior mark is identical, nearly identical or substantially similar to the senior mark”. The following was held while reversing and remanding the case to the District Court:

[9] Finally, our review of the district court’s balancing of the relevant factors convinces us that application of the incorrect standard affected its dilution determination. According to the district court, degree of similarity was only one of three factors that weighed in Abercrombie’s favor. The district court assumed, without deciding, that Levi Strauss also had two factors—acquired distinctiveness and degree of recognition—that weighed in its favor. Thus, application of the correct, less-demanding standard could have tipped the balance in favor of Levi Strauss. The degree of similarity between the Ruehl and Arcuate marks may be insufficient to support a likelihood of dilution, but that conclusion can come only after consideration of the degree of similarity in light of all other relevant factors and cannot be determined conclusively by application of an “essentially the same” threshold.

Thus dilution is the blurring or tarnishing of the image or persona of a well-known trademark by use of a similar mark typically on unrelated goods, or in a manner that tends to reduce its distinctiveness. The dilution doctrine grew out of common law principles. It has now become part of the trademark law and provides protection to trademarks even where claims of trademark infringement are not viable.

In case of ITC LTD. vs PHILIP MORRIS PRODUCTS SA AND ORS. the Hon’ble Delhi High Court held following:

49. As commented earlier, the analogy of tests evolved in infringement actions where similar goods or services are in question appears to be inapposite, after the enactment of Section 29 (4). The plaintiff has to fulfil a more stringent test (than the deceptive similarity standard) of proving identity or similarity, where trademark dilution is complained. Applying the reasoning of the decisions cited previously, it is held that a “global” look, rather than a focus only on the common elements of the mark, is to be taken, while considering if the impugned or junior mark infringes, by dilution, an existing registered mark…………………………………………

Rajni Sinha

Advocate Bombay High Court.

7738080174

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LEGAL INNOVATION

Curative Petition: Ex debito justitiae

The constitution of India has conferred a power of review of the Judgment of Apex Court under Articles 137 and 145. However, a party stands still aggrieved by reason of a rejection of review, the question arises whether all door of justice is closed for  litigant and to suffer the onslaught for all times to come and in perpetuity, when on the face of the Order it appears to be wholly without jurisdiction or in violation of natural justice.

The innovative concept of curative petition was evolved by Supreme Court as a remedy for injustice in rigid judicial protocol. Hon’ble justice Umesh C. Banerjee while agreeing to justice Quadri opined following:

The oft quoted statement of law of Lord Hewart, CJ in R v. Susssex Justices, ex p McCarthy (1924 (1) KB 256) that it is of fundamental importance that justice should not only be done, should manifestly and undoubtedly be seem to be done had this doctrine underlined and administered therein.     In this context, the decision of the House of Lords in R v. Bow Street Metropolitan Stipendiary Magistrate and others, ex parte Pinochet Ugarte (No.2) seem to be an ipoc making decision, wherein public confidence on the judiciary is said to be the basic criteria of the justice delivery system  any act or action even if it a passive one, if erodes or even likely to erode the ethics of judiciary, matter needs a further look. Brother Quadri has taken very great pains to formulate the steps to be taken and the methodology therefor, in the event of there being an infraction of the concept of justice, as such further dilation would be an unnecessary exercise which I wish to avoid since I have already recorded my concurrence therewith excepting, however, lastly that curative petitions ought to be treated as a rarity rather than regular and the appreciation of the Court shall have to be upon proper circumspection having regard to the three basic features of our justice delivery system to wit, the order being in contravention of the doctrine of natural justice or without jurisdiction or in the event of there is even a likelihood of public confidence being shaken by reason of the association or closeness of a judge with the subject matter in dispute.

“    (Rupa Ashok Hurra vs Ashok Hurra And Another, AIR 2002 SC 1771)

The Hon’ble Supreme Court also took support of Article 142 of the Constitution of India for evolving the concept of Curative Petition. However, this power cannot be used to “supplant” substantive law applicable to the case or case under consideration of the Court. Prior to Rupa Ashok Hurra v. Ashok Hurra & Anr. (2002 (4) SCC 388), the Supreme Court in a number of decisions had held that in case of a miscarriage of justice, it is amenable for correction. Examples of this sort are to be found in M.S.Ahlawat vs State Of Haryana and Anr ((2000) 1 SCC 270), Harbans Singh v. State of Uttar Pradesh & others (1982 SCR (3) 235) and Supreme Court Bar Association v. Union of India & Anr (AIR 1998 SC 1895). In the above mentioned cases the Court invoked its inherent power under Article 142 to do complete justice.

The principle of ex debito justitiae was also invoked in support of the Curative petition. The ex debito justitiae was expounded in order to propound the modalities of curative petitions.

The Hon’ble Supreme Court devised following procedure for curative petition in case of Rupa Ashok Hurra v. Ashok Hurra & Anr. (2002 (4) SCC 388).“52. The petitioner, in the curative petition, shall aver specifically that the grounds mentioned therein had been taken in the review petition and that it was dismissed by circulation. The curative petition shall contain a certification by a Senior Advocate with regard to the fulfillment of the above requirements.

  1. We are of the view that since the matter relates to re-examination of a final judgment of this Court, though on limited ground, the curative petition has to be first circulated to a Bench of the three senior-most Judges and the Judges who passed the judgment complained of, if available. It is only when a majority of the learned Judges on this Bench conclude that the matter needs hearing that it should be listed before the same Bench (as far as possible) which may pass appropriate orders. It shall be open to the Bench at any stage of consideration of the curative petition to ask a senior counsel to assist it as amicus curiae. In the event of the Bench holding at any stage that the petition is without any merit and vexatious, it may impose exemplary costs on the petitioner.

The Hon’ble Supreme Court has also framed rules under Order XLVIII of the Supreme Court Rules, 2013 for the Curative Petition as one procedure regarding the remedy available to a person even after the Review.

The Hon’ble Supreme Court has entertained following important Curative Petition, which refers to procedure in case of Rupa Ashok Hurra v. Ashok Hurra & Anr. (2002 (4) SCC 388):

Sr No. Cases Relief Brief Facts
1. Sumer vs State Of U.P

(Curative Petition (crl.)  3 of 2005)

Dismissed The main thrust of the petitioner is that the evidence and the factors taken into account by the High Court for disbelieving the testimony of the eye-witnesses have not been properly appreciated by Supreme Court while allowing the appeal of the State against judgment of acquittal.
2. Bakshi & Co vs Commissioner Of Sales Tax Lucknow (Curative Petition (C) No. 108 of 2004) Dismissed The curative petition was accompanied by a certificate from Senior Advocate. The certificate did not specifically set out which of the grounds, if any, for entertaining the curative petition was available in the case. Thus, the certification did not fulfil the requirement laid down in Rupa Ashok Hurra case.
3. Gurdeep Singh & Anr vs State Of Punjab & Ors (Curative Petition No. 23 of 2004) Dismissed ————Do—————–
4. Harendra Jha .Vs.   State of Jharkhand.

(Curative Petition(Crl) D   11467   OF   2007)

Defect in Petition The petitioner failed to produce a certificate from a Senior Advocate as provided in paragraphs 51 and 52 of the decision reported in Rupa Ashok Hurra v. Ashok Hurra & Anr. (2002 (4) SCC 388)
5. Shaukat Hussain Guru vs State (Nct) Delhi & Anr Dismissed Supreme Court had acquitted the petitioner on all charges framed against him but convicted him under Section 123 IPC, an offence with which he was not charged and in respect of which even the Public Prosecutor did not advance any argument in this Court. However, the curative petition was dismissed by a Bench of four Judges of supreme Court on 12th January, 2007.
6. C.B.I vs Keshub Mahindra (Curative Petition(Crl.) NOS. 39-42  of 2010 Dismissed The main planks of the curative petitions was that even though in course of trial before the Magistrate, additional evidences have come on record that fully warrant the framing of the higher charge (s) and the trial of the accused on those higher charges, as long as the 1996 judgment stands the Sessions Court would feel helpless in framing any higher charges against the accused in the same way as the trial
court observed that in view of the judgment of the Supreme Court no court had the power to try the accused for an offence higher than the one under Section 304A of IPC. The learned Magistrate failed to appreciate the correct legal position and misread the decision dated 13.9.1996 as tying his hands from exercising the power under Section 323 or under Section 216 of the Code.
7. Haryana State Ind. Dev. … vs Pran Sukh & Ors (Curative Petition(C) D. No. 3040 OF   2014) Dismissed The Curative Petition was misconceived and vexatious for the reasons rightly recorded by the Registry. The compensation for the acquired land was enhanced by the High Court by relying on a Sale Deed executed by two private and independent companies. HSIIDC had unsuccessfully challenged the Judgment of the High Court before Supreme Court.

The para 6 to 10 of judgement in case of   Yakub Abdul Razak Memon vs State of Maharashtra in W. P. (Crl.) No.129 of 2015, while dwelling upon the reference “whether the curative petition had been decided by the Bench duly constituted as per the Rules”, critically examines the principle and procedure in curative petition.

Rajni Sinha

Advocate High Court

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