THE POWER OF INDUSTRIAL DESIGNS IN THE TEXTILE & APPARELS SECTOR Jyotsna Balakrishnan Anand & Anand, New Delhi June 2005

DESIGN RIGHTS HAVE AN IMPORTANT ROLE TO PLAY IN THE FASHION INDUSTRY

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

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 and the linchpin for your business

IPRs & the fashion industry value additionIf 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 createThe recognition of the role of the DESIGNER & the immense value of the INTANGIBLE that they create International experience shows that protection stimulates rather than stunt the fashion industry – eg., FranceInternational experience shows that protection stimulates rather than stunt the fashion industry – eg., France

IPRs & the fashion industry PROFITDesign 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

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

A DESIGN UNDER THE DESIGNS ACT, D or 3D features2D or 3D features of shape, configuration, pattern, ornament, composition of lines, colours industrial process or meansApplied to any article by any industrial process or means appeals to the eyeThe finished article appeals to the eye Does not include anything which is in substance a mere mechanical deviceDoes not include anything which is in substance a mere mechanical device Not an artistic work or trademark

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

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 NEW AND ORIGINALBut over the years, the test has become NEW AND ORIGINAL

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

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 buttons…to hold that would be to paralyse industry. Thus, trifling variations/immaterial details would not be considered NEW

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

Example of Novelty Wallpaper Manufacturers Limited case Wallpaper pattern held to be a new and original combination of known designs

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

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

WHY REGISTER YOUR DESIGN? – DESIGNS ACT, 2000 Statutory right – accrues 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 10 years extendable by 5Monopoly Period of 10 years extendable by 5 Gives you a Unique Selling Point (USP) Is an asset & can be licensed

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

WHO CAN APPLY FOR A DESIGN REGISTRATION? If design has been specially commissioned for good consideration, the person for whom it is executedIf design has been specially commissioned for good consideration, the person for whom it is executed An assignee or exclusive licenseeAn assignee or exclusive licensee In any other case, the AUTHORIn any other case, the AUTHOR

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

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?

THE DESIGN DEVELOPMENT PROCESS TEXTILESFor example, TEXTILES: Sketches Engineered templates Film tracing Screens Engraving/printing Fabrication artistic worksEach on of the above can qualify as artistic works under the Copyright Act, 1957

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

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

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

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

DESIGN Vs. COPYRIGHT DESIGNCOPYRIGHT Complete monopolyOnly protects against copying Need to register to claim protection Subsists inherently Has to be NEWNo requirement for novelty Maximum 15 yearsLife of author + 50 years Only in respect of goods registered for Is not goods specific

DESIGN AS A TRADEMARK The Epi style leather design of Louis Vuitton MalletierThe Epi style leather design of Louis Vuitton Malletier Protected as a trademark against piracy by the Delhi High CourtProtected as a trademark against piracy by the Delhi High Court

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

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

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

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

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

The Suneet Verma controversy – Lessons to be learnt oAt 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

CONCLUDING OBSERVATIONS oThe 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 oA unique design for which you see commercial value and which you intend to commericalise, get it registered as a design

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 oMaintain documentation and records at every stage of product development – helps you claim copyright even if your design is unregistered

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

CONCLUDING OBSERVATIONS unregistered design right oThe 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