Fashion & IP
Fashion industry can cover a wide ambit of intellectual property rights within it, in connection with clothes, footwear, accessories, jewelry etc. Fashion Law is a rapidly growing speciality which includes Copyright, Trademark, Designs, Patents and Licensing and a lot of designers viz. Ritu Kumar, Tarun Tahiliani and JJ Valaya, have succeeded in protecting their fashion designs and trademarks and have engaged in litigations to protect the the same.
As per a study conducted by the Associated Chambers of Commerce and Industry of India (ASSOCHAM), the domestic designer apparel industry in India, which was of worth Rs.720 crore and was reporting a compounded annual growth rate (CAGR) of about 40% in 2012,is likely to cross Rs. 11,000 crore mark by 2020. Although, the contribution of the Indian designer wear industry in the global market is a minimal 0.32% but it is expected to reach 1.7% by 2020.
Fashion design piracy involves unauthorized copying of original fashion designs. And generally it falls into one of the two following categories:
(1) Knockoffs: A knockoff is a close copy of the original fashion design, mimicking its elements, but is sold under a label different from the label of the original design. Thus, it is not sold in an attempt to pass as the original.
(2) Counterfeits: A counterfeit is a copy of the original fashion design as well brand logo or label of that design. Counterfeit apparel is sold as an attempt to pass off as the original product. Counterfeits may also involve piracy in fashion design besides piracy in logo or label of fashion brand.
SUBJECT MATTER OF PROTECTION
Articles designed by fashion designers, they can be protected under various categories of IP as follows:
The Sketch Design can be registered as artistic work under the Copyright Act 1957;
The Article Design can be well protected under the Designs Act (under class 02, 03, 05, 10 and 11 of Third Schedule of Designs Rules, 2000);
Colour Combinations can also be protected under Copyright Act, 1957;
Fabric or any other material used in the Article can also be protected under Designs Act, 2000 and Patents Act, 1970 (if involves inventive step and is novel);
Logo Designs can be protected under the Trademarks Act, 1999 where logo is part of design. For instance, Louis Vuitton handbag covered with a repeating pattern of the brand’s well-known LV mark.
The IPR Regime in India provides protection to the fashion design under three legislations i.e. The Designs Act, 2000, The Indian Copyright Act, 1957, The Trademarks Act, 1999 and GI Act, 1999. From the perspective of Fashion Industry, the Acts do not protect the entire garment as a whole; rather it protects the particular/individual aspects like shape, pattern, colour etc. of the garment.
1. Protection under Design Act:
The Designs Act only protects registered designs not the unregistered designs. Hence, fashion designers who have not duly registered their designs cannot get the benefits of the Act. It is pertinent to note that a fashion design, which is a trademark, cannot get protection under the Designs Act.
Further, The Designs Act 2000, is so drafted to permit protection of the non-functional aspects of an object, having visual appeal, such that design that include the features of shape configuration, pattern, ornament or composition of lines or colours applied to any two dimensional or three dimensional or on both forms. Such a design right remains in force for a period of ten years, extendable subject to conditions, for a total period of 15 years.
Section 22 of The Design Act states that in the case of piracy of a registered design, the infringer shall be liable to pay the registered proprietor of the design a sum not exceeding Rs25,000 ($451) recoverable as a contract debt; if the proprietor elects to bring a suit for the recovery of damages for any contravention of the rights conferred to him and for an injunction against repetition of it, damages may be awarded and the person may be restrained by injunction.
The design registration system in India is time bound and the fastest of all IP registration procedures. Moreover, in view of the resources invested in creating a new design, the registration procedure is economical and cost effective. Once registered the proprietor enjoys monopoly and exclusive rights not only against copies of the protected design, but also against substantially similar products.
2. Protection under Copyright Act:
The Copyright Act and Designs Act overlap each other on the issue of design protection. A fashion design may get copyright protection as per the following:
A fashion design which is capable of being registered as “design” under the Designs Act, 2000 and registered as per the provisions of the Act will get copyright protection only under the Designs Act and nowhere else. In this scenario, copyright in registered fashion design will subsist for a maximum period of fifteen years.
Further, a fashion design, which is capable of being registered as “design” under the Designs Act, 2000 but not so registered will get copyright protection under the Copyright Act, 1957. Copyright in fashion design, in this context, will subsist up to fiftieth (50th) reproduction by an industrial process of the article to which design has been applied.
Fashion design which is an original artistic work and hence not capable of being registered as “design” under the Designs Act, 2000 will get copyright protection in the form of copyright in original artistic work under the Copyright Act, 1957. Copyright in an original artistic work automatically subsists as soon as the work comes into existence and it remains during the lifetime of the author plus sixty years, when published during the lifetime of the author.
Section 15 of The Copyright Act provides for special provisions stating that copyright shall not subsist in any design, which is registered or capable of being registered under The Design Act. Another important parameter of this provision is that copyright in the design shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright or with his licence by any other person. This clause stymies the inherent protection accorded by copyright that a person enjoys merely by virtue of creation.
The original artistic work, as contrasted with the applied artistic work i.e. the design would continue to fall within the ambit of artistic work under copyright Act and shall be entitled to full period of copyright protection. The commercial/industrial manifestation of original work such as the design derived from and founded upon the original artistic work for the purpose of industrial production of furnishings would be covered by the limitations under Section 15 of the Copyright Act.
Hence, a fashion designer seeking to protect his/her creations under the Copyright Act, 1957,needs to prove:
1) that his/her creation is an “original artistic work” within the meaning of the Copyright Act, 1957 and is not a “design” within the meaning of the Designs Act, 2000; and
2) that the article (e.g. garment),to which the design derived from the creation has been applied, has not been reproduced more than fifty times by an industrial process by the owner of the copyright or, with his license, by any other person.
3. Protection under Trade mark Act:
A trademark is useful for a fashion design only in a situation where it is visibly integrated into design to such an extent that it becomes an element of the design. There is a growing tendency among fashion designers to incorporate a trademarked logo on the outside of the garment at the time of creation of clothing and accessory designs. In these circumstances, the logo becomes part of the design, thus trademark provides significant protection against design copying. Further, the brand names as such also become the subject matter of protection under the Trade Marks Act, 1999.
4. Protection under Geographical Indications Act, 1999:
The Fourth schedule of the GI Act provides for a classification of goods protectable under the Act. The registration of geographical indications evidently depicts the protection of fashion apparel vis-a-vis the texture and artistic value in the fabric used to create apparels and accessories. Till now about, 15 kinds of GIs have been registered in respect of textiles in India like Kasuti Embroidery from Karnataka, Kutch embroidery from Gujarat, and Sujini embroidery works from Bihar, etc.