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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Posted in IPR

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