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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.

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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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India‟s lies in value addition • The recognition of the role of the DESIGNER & the immense value of the INTANGIBLE that they create.IPRs & the fashion industry • If China‟s strength lies in volumes.. France 5 . • International experience shows that protection stimulates growth rather than stunt the fashion industry – eg.

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 6 .

“DESIGNS” Functional / utilitarian Purely artistic works Designs with eye-appeal & capable of Industrial application Patents Act. 1970 Copyright Act. 2000 7 . 1957 Designs Act.

2000 • 2D or 3D features of shape. composition of lines. ornament.A “DESIGN” UNDER THE DESIGNS ACT. 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 8 . pattern. configuration.

DESIGNS CAN BE 2D OR 3D OR COMBINATION OF BOTH • Surface pattern (2D) • Cut of the garment (3D) 9 .

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 10 .

the test has become NEW AND ORIGINAL 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 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 12 .

” • Thus.“TRADE VARIANTS” • Le May v. trifling variations/immaterial details would not be considered “NEW” 13 . 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 buttons…to hold that would be to paralyse industry.

WHAT IS “NOVELTY” • Strikingly different appearance • Pattern made up of old features but resulting combination with strikingly different appearance can be novel 14 .

Example of “Novelty” • Wallpaper Manufacturers Limited case • Wallpaper pattern held to be a new and original combination of known designs 15 .

2000 ? • „Design‟ means only the features of shape. property mark or artistic works. separate or combined. mechanical or chemical. but does not include any mode or principle or construction or any thing which is in substance a mere mechanical device. whether manual. which in the finished article appeal to and are judged solely by the eye. and does not include any trade mark . by any industrial process or means.What is meant by „Design‟ under the Designs Act. configuration. 16 . 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.

artificial. 2000 ? • Under the Designs Act. or partly artificial and partly natural.What is meant by an article under the Designs Act. and includes any part of an article capable of being made and sold separately. 2000 the "article" means any article of manufacture and any substance. 17 .

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 18 .

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. 19 .

it will not be registrable 20 . there may be a design which also has functional features • Test is to see if design is solely dictated by function.WHAT IF YOUR DESIGN IS ALSO FUNCTIONAL? • The intent of the Designs Act is to protect shapes & not functions • But. If yes.

Article must have its existence independent of the Designs applied to it. Punjab. by an Order on civil original case No. ornamentation is removed only a piece of paper. [Design with respect to label was held not registrable. High Court]. 9-D of 1963.e. So.Can stamps. Because once the alleged Design i. cards. 21 . metal or like material remains and the article referred ceases to exist. Labels. the Design as applied to an article should be integral with the article itself. be considered an article for the purpose of registration of Design? • No. tokens..

2000 • • • • • Statutory right – applies.territorial Right to prevent all other from producing.only on registration . 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 22 .WHY REGISTER YOUR DESIGN? – DESIGNS ACT.

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 23 .

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 24 .

who owns the design should be spelt out in the contract • Also. be clear in the contract on who owns the design 25 . where a part of the design process is sourced out. it should be spelt out • While designing for someone else.Importance of getting clarity on ownership of the “DESIGN” • In the context of joint design efforts.

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? 26 .THE OVERLAP BETWEEN COPYRIGHT & DESIGN LAWS • Purely artistic works. 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.THE DESIGN DEVELOPMENT PROCESS • For example. 1957 27 .

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 28 .

but which has not been so registered .“Artistic work” – Overlap of Rights? • Copyright does not subsist in design registered under the Designs Act • Design capable of being registered.copyright shall cease as soon as any article to which the design has been applied more than fifty times by an industrial process 29 .

) though Section 15 (2) remains a bar 30 . prototypes. etc.Copyright & Designs Law • However. the sketches. Also.e. engravings. 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. it may not be practically possible for a designer to get all his designs registered..

1957 31 .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.

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 32 .

DESIGN AS A TRADEMARK • The “Epi” style leather design of Louis Vuitton Malletier • Protected as a trademark against piracy by the Delhi High Court 33 .

the term. territory. amount of royalty & type of products for which design can be used by licensee 34 .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.

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. 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.Is marking of an article compulsory in the cases of article to which a registered design has been applied? • Yes. 35 . 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.

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 36 .

Pratt • Lace pattern was held to have been infringed 37 .Example of infringement of registered design • Birkin v.

Ralph Lauren • YSL was awarded damages for Ralph Lauren’s infringement of the design rights in YSL’s design of its tuxedo dress 38 .YSL v.

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 39 .

The Suneet Verma controversy – Lessons to be learnt o At the same time. do due diligence over its ownership – give credit – take a license if you do need to use it 40 . if you need to use a design.

It is not mandatory to produce the pen first and then make an application.a new shape which can be applied to a pen thus capable of producing a new appearance of a pen on the visual appearance. • Example. 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.Is it mandatory to make the article by industrial process or means before making an application for registration of design ? • No. 41 .

get it registered as a design 42 .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 – 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.

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 43 .

CONCLUDING OBSERVATIONS • When using designs. take licenses • Commericalise your design through license arrangements 44 . do your due diligence on the ownership of these designs – give credit.

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 45 .