THE POWER OF INDUSTRIAL DESIGNS IN THE TEXTILE & APPARELS SECTOR

Dr. Nilanjana Bairagi , NIFT Delhi & Jyotsna Balakrishnan Anand & Anand, New Delhi
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DESIGN RIGHTS HAVE AN IMPORTANT ROLE TO PLAY IN THE FASHION INDUSTRY

The important purpose of design Registration is to see that the artisan, creator, originator of a design having aesthetic look is not deprived of his bonafide reward by others applying it to their goods.

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
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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 (Unique Selling Point ) for your business
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IPRs & the fashion industry

If Chinas strength lies in volumes, Indias 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 growth rather than stunt the fashion industry eg., France
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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 others rights
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DESIGNS

Functional / utilitarian

Purely artistic works

Designs with eye-appeal & capable of Industrial application

Patents Act, 1970

Copyright Act, 1957

Designs Act, 2000

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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
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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 or elsewhere (exception is provided for exhibitions)

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

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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
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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

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TRADE VARIANTS
Le May v. Welch: 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 buttonsto hold that would be to paralyse industry. Thus, trifling variations/immaterial details would not be considered NEW
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WHAT IS NOVELTY
Strikingly different appearance
Pattern made up of old features but resulting combination with strikingly different appearance can be novel

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Example of Novelty
Wallpaper Manufacturers Limited case
Wallpaper pattern held to be a new and original combination of known designs
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What is meant by Design under the Designs Act, 2000 ?

Design means only the features of shape, configuration, pattern or ornament or composition of lines or colour or combination thereof applied to any article whether 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 or construction or any thing which is in substance a mere mechanical device, and does not include any trade mark , property mark or artistic works.
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What is meant by an article under the Designs Act, 2000 ? Under the Designs Act, 2000 the "article" means any article of manufacture and any substance, artificial, or partly artificial and partly natural; and includes any part of an article capable of being made and sold separately;

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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
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Design Registration in India

Designs The application for registration of a design can be filed at the Patent Office at Kolkata and its Branch Offices at New Delhi, Mumbai and Chennai.

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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
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Can stamps. Labels, tokens, cards, be considered an article for the purpose of registration of Design?
No. Because once the alleged Design i.e., ornamentation is removed only a piece of paper, metal or like material remains and the article referred ceases to exist. Article must have its existence independent of the Designs applied to it. [Design with respect to label was held not registrable, by an Order on civil original case No. 9-D of 1963, Punjab, High Court]. So, the Design as applied to an article should be integral with the article itself.
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WHY REGISTER YOUR DESIGN? DESIGNS ACT, 2000

Statutory right applies- 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
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CLASSIFICATION ACCORDING TO GOODS

Registration is in relation to goods Locarno classification which is followed throughout the world 32 classes Protection confined to class for which registered More than one design may be registered as a set of articles of same character
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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
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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
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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?

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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
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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
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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

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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
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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

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DESIGN Vs. COPYRIGHT

DESIGN Complete monopoly Need to register to claim protection Has to be NEW Maximum 15 years Only in respect of goods registered for COPYRIGHT Only protects against copying Subsists inherently

No requirement for novelty Life of author + 60 years

Is not goods specific
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DESIGN AS A TRADEMARK
The Epi style leather design of Louis Vuitton Malletier
Protected as a trademark against piracy by the Delhi High Court
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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

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Is marking of an article compulsory in the cases of article to which a registered design has been applied?
Yes, it would be always advantageous to the registered proprietors to mark the article so as to indicate the number of the registered design except in the case of Textile designs. Otherwise, the registered proprietor would not be entitled to claim damages from any infringer unless the registered proprietor establishes that the registered proprietor took all proper steps to ensure the marking of the article, or unless the registered proprietor show that the infringement took place after the person guilty thereof knew or had received notice of the existence of the copyright in the design.
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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
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Example of infringement of registered design

Birkin v. Pratt

Lace pattern was held to have been infringed

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YSL v. Ralph Lauren

YSL was awarded damages for Ralph Laurens infringement of the design rights in YSLs design of its tuxedo dress

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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
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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

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Is it mandatory to make the article by industrial process or means before making an application for registration of design ?
No, design means a conception or suggestion or idea of a shape or pattern which can be applied to an article or intended to be applied by industrial process or means. Example- a new shape which can be applied to a pen thus capable of producing a new appearance of a pen on the visual appearance. It is not mandatory to produce the pen first and then make an application.
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CONCLUDING OBSERVATIONS
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 dont 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
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CONCLUDING OBSERVATIONS
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
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CONCLUDING OBSERVATIONS
When using designs, do your due diligence on the ownership of these designs give credit, take licenses
Commericalise your design through license arrangements

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CONCLUDING OBSERVATIONS
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

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