Legal Protection accorded to Fashion in India – Dressed to Nines?
December 1, 2022
The Fashion Industry is a 1.4 trillion dollar industry worldwide. It is an industry that keeps ever-evolving by producing brand-new creations, and innovations and becoming state-of-the-art. The Fashion industry is expanding at a fast pace and has grown out of apparel to also include luxury goods. In the contemporary world, small businesses are striving to build their brands by infusing knowledge and expertise into their product.
As consumers grow both in number and in their economic status their fashion style keeps on varying and to satisfy this ever-increasing demand, the industry needs not just a lot of fashion designers but also mechanisms to protect their rights on their IPs such as protection of the designs of each article, protection of the brand name of the designers which distinguishes it from others in the market and many more. The fashion industry needs protection from counterfeiters to not only curb plagiarism but also to scale up the businesses making Intellectual Property a core asset to the Fashion Industry.
This paper talks about the categories of Intellectual Property used to protect the creativity and designs of couturiers. It also discusses the legal way of practicing Intellectual Property Rights with reference to all the sections mentioned under Indian Statutes. The paper covers the fundamentals to keep in mind for intellectual property through jurisprudence. We then move on to talk about all the barriers which make it difficult for fashion designers to protect their designs, work, and their intellectual capital followed by the importance of protecting intellectual property in the apparel industry. We conclude by arguing ways to remove these barriers and protect fashion designers’ Intellectual property and their work.
Intellectual Property is a personal right that comes into existence once something new and original is created and registered by the rights holder. Intellectual property includes the design which is protected for each article of clothing, protects the designer’s name and its brand through Trademarks, Patents in case there is a novel and new invention made in the manufacturing process, and Copyright as the fashion comes within the purview of artistic creation. Some of these rights occur automatically i.e. Copyright whereas others need to be registered. Fashion Technology has grown tremendously which has further enabled counterfeiters to produce counterfeit products at cheaper rates using the internet they have gained a wider audience through deception thus robbing the original designer of proceeds from the sale of these counterfeit designs.
The fashion industry is different from other industries because in the fashion industry as seasons change people want new styles and designs in their wardrobes thus fuelling the creation and selling of new designs all around the year. The apparel industry has to introduce new varieties every now and then instead of improving it around for years. It is kind of part and parcel of the business environment making this commercial venture highly prone to infringement. It is advisable for all the owners in this industry to be educated about the changes in IP protection and make the most of it to protect their own rights.
Intellectual Property Rights in Fashion Industry
Industrial Designs in Fashion Industry
Industrial Designs are protected in accordance with the provisions of the Designs Act of 2000. As stated in the act Design means any shape, pattern, or combination of colors and lines in a new or original garment and can be registered. Industrial designs mainly consist of two-dimensional features such as patterns, lines, and colors and three-dimensional features such as the shape of the article. The validity of the copyright in design can be enjoyed by the registered proprietor for ten years from the date of application. It can be extended further for five more years by providing a prescribed fee.
Many prominent fashion designers opt for design registration to protect their classic design pieces. For instance, the iconic “Chanel Suit” designed by “Coco Chanel” is quite popular even today. Some designs pass on in no time but some stay forever like the “Kelly Bag” made by Hermes which is still regarded as a fashion statement after it got popular by “Grace Kelly” in 1956. Registration of industrial designs on time is more appropriate and powerful as it helps in protecting fashion icons from imitators. After successful registration one can protect their designs from being used by third parties without consent.
Many times manufacturers do not invest in protecting their intellectual property for reasons such as the short useful life of the fashion style and the major financial burden incurred in the IP process. Taking this into consideration many countries such as the United Kingdom and European Union has introduced an unregistered form of registration. This registration has a validity of a maximum of three years which begins from the date when the designs were first published. This benefits the designers who have budget constraints and wish to test the market first. Mentioned below are a few landmark fashion law cases which explored the unexplored ambits of fashion law.
Under this case, Plaintiff filed for Permanent Injunction. It was argued by the plaintiff that the defendant was a former employee in their company, worked as a brand consultant, and was well-versed with the company’s registered designs and motifs. The defendant had copied them and used them to promote his own business which led to confusion among the consumers.
It was held by the court that, the defendant had the intention to get fame and success through the plaintiff’s company and such unfair competition was punished with Permanent Injunction.
Crocs Inc. filed a suit against Bata India Ltd, Liberty Shoes Ltd, and Action Shoes Pvt. Ltd, Aqualite India Ltd, Bioworld Merchandising India Ltd, Relaxo Footwear Ltd, and Kidz Palace claiming that they have pirated the registered design of clogs. Whereas, Defendants argued that the disputed design was not new and original to Crocs for which it is claiming exclusive entitlement. It was already in Public Domain before the registration.
The Court reiterated the meaning of new and original Design as per the Design Act, 2000, and held the registration of clog shoes by Crocs as faulty because the design was already present in the public domain before it got registered in the name of Crocs.
Procedure of filing Industrial Designs
Here we look into the steps involved in the procedure of Design filing in India. The procedure of Design registration is contained under chapter 2 and from Section 3 to Section 10 of The Designs Act, 2000.
Conditions to be fulfilled – The design should be new and original, should not be published to the public before applying for registration and the subject matter should not be obscene or scandalous in any matter. The design should not be in conflict with public morality and order.
Self-Search – The applicant has to look for other similar designs in the public database and make sure that the design is unique and does not match with other registered ones.
Filing Application – The person claiming to be the owner will file for the application in a prescribed manner with the prescribed fees in any of the four Patent offices located in Kolkata, Mumbai, Chennai, and Delhi. The date of application filling will be deemed to be the date of registration.
Numbering of Application – Once the application is filed with all the mandatory documents and prescribed fees, the applicant is given a filing number and filing date.
Examination – Before granting the registration, the application is sent for examination to the examiner and the report of the same comes within two months.
Objections – If there are any formal objections presented against the application, the applicant will be given time to resolve those objections and to file a response in writing for the same. The registrar will call for a hearing if he is not satisfied with the applicant’s response. If the registrar is not satisfied even then, the design will not be considered for registration.
Publication – If there are no formal objections to the application the registration for design will be granted. The controller thereafter will publish the particulars of the design in the prescribed manner in the office journal which will be open for public inspection.
Issuance of Certificates – After completing all the stages successfully the controller will issue a certificate to the proprietor. This certificate will be granted for the next 10 years and can be renewed afterward.
Trademarks in Fashion Industry
Trademarks are protected in accordance with the provisions of the Trade Marks Act 1999. Trademark as defined in the act means a mark that is able to differentiate the goods and services of one person from that of another. Trademark is regarded as the face of big fashion houses. It has the biggest impact because it is through trademarks that consumers can easily identify and recognize the origins of a particular product. The validity of trademark registration can be enjoyed for ten years and can be renewed for another ten years after the expiry of the said term. You will see frequent legal disputes going on with respect to trademarks by prominent fashion designers.
For instance, in 2014 a suit was filed by well known Chanel brand against a salon brand named “Chanel Jones”. The court held that word “Chanel” has now become a notable name for high fashion and style. Court ordered that using the word “Chanel” was a trademark infringement and so to stop using it. Another suit dealt with trademark infringement where an apparel brand named “Penneys” had to change its brand name to “Primark” because of the well-known United States brand named “JC Penny” which was dealing in the same subject matter.
Recently, Fluid Trademarks have been gaining immense popularity. They are considered to be the new age of Trademarks. Fluid Trademarks are established from the original and well-known trademarks and avoid confusion for consumers, enabling them to recognize these Fluid Trademarks in the same way as it was with the regular ones. These are made to grab attention and connect with people in digital space through customized marks made especially on different festivals and occasions. It can be registered but for a temporary period of time. A popular example is “Doodle” from Google.
Very recently when the pandemic hit, a few big brands started redesigning their logos to promote social distancing. “Kappa”, a renowned Italian sports brand modified its logo by adding some space between the silhouettes. With such modification allowed under trademarks naturally in the year 2012, a question was aroused: If a color can be trademarked or not?
Under this case, Plaintiff had the registered trademark for “Red Soles”. Plaintiff sued the defendant because they made monochrome shoes with the color red. It was held by the court that the color was not protectable, the trademark is only going to protect the contrasting soles and not otherwise.
The defendant was a Tote bags company that used to make drawings of well-known, luxurious handbags on one side of the bag and “My Other Bag” written in larger fonts on the other side of the bags. Plaintiff sued the defendant claiming Trademark Infringement.
It was held by the court that products from My Other Bag are simply for comic purposes and do not create any confusion among the consumers. So, the trademark used for the purpose of parody does not require any license.
Arudra Engineers Private Limited sued Patanjali for using their registered trademark of the word “Coronil”. “Coronil” is used by Arudra Engineers Private Ltd. for industrial cleaning and chemical preparations. The interim order passed by the High Court of Madras remained untouched by CJI Bobde and held that if we restrain Patanjali from using the word “Coronil” during the covid19 times it will be terrible for the product.
Procedure of filing a Trademark
We have Brand Name registration in India i.e. procedure for Trademark filing in India. The procedure of Trademark registration is contained under chapter 3 and from Section 18 to Section 26 of The Trademarks Act, 1999.
Self-Search – It is important to conduct a search among tons of trademarks whether registered or not so that our trademark would stand out unique and can be registered easily. It also informs one about the existing competition in the industry they operate in.
Application Filing – As per the rules, the trademark application should be filed by the owner claiming it. The application should be supported by relevant documents attached in the prescribed manner. The date of application for filling will be deemed to be the date of registration.
Numbering of Application – Post filing of the application a unique number is provided which acts as proof of such application.
Examination – The application is examined and a detailed report is prepared within thirty days. The report contains all the observations made through the scrutiny process by the examination officer.
Publication – Once the application is examined and accepted thereon, the registrar will send the application for publication in the trademarks journal. It is done to invite people who would like to object to the said trademark.
Trademark Opposition – Till four months of publication, it will be open for the public to oppose the said trademark. In such a case, a counter-statement is filed by the applicant who states the reasons for such opposition being invalid. Both parties have to give evidences to prove the same. The registrar will go through it and if he is satisfied then he might dismiss the application filed by the third party or call for a hearing.
Issuance of Certificate – After the due process, a certificate under the seal of the trademark’s office is given. It will be applicable for the next 10 years and have to be renewed after the expiry of a such time period.
Copyright in Fashion Industry
Copyrights are protected in accordance with the provisions of the Copyright Act, 1957. Copyright is defined in the act as the exclusive right given to literary works, dramatic works, musical works, inventive works, cinematographic films, recordings, etc. This Act protects only the expression and not the idea. Therefore, while getting copyright registered, it should be noted that a product as a whole never gets protected instead the act protects the design made on the product such as the print pattern. However, a limitation with design is that if the design is capable of being registered under the Design Act, 2000 but is registered instead in the Copyright Act 1957, then in case the design has been reproduced more than 50 times, the protection will cease to have an effect.
Following are a few cases that show how copyright can be used to protect a company’s Intellectual Property:
This case raised the issue of whether the designs printed on the uniform of cheerleaders are protected under the Copyright Act. The Court was of the opinion that the designs are copyrightable because of the separability formula. The court said that if the designs can be plucked out from the article and implanted on another one then it will come under the head of two-dimensional works and hence will be eligible for copyright protection.
This case aroused the question of whether printed patterns will come under the head of artistic work or not and if such patterns will be given protection under the Copyright Act or Design Act. The Court held that such designs will be protected under the Copyright act if more than 50 copies are not produced of the same commodity for commercial usage.
This case raised the issue of whether the real owner is protected under Section 15(2) of the Copyright Act if the owner has registered his designs in the Copyright Act which were capable of being registered under the Design Act but were not so registered and has produced the commodity with the same design more than 50 times?
The court was of opinion that if the production of the commodity with the same design incorporated on it crosses the limit of 50 through an industrial process then the copyright protection will cease to have an effect and will not remain with the real owner. The court held that defendant has not infringed the Copyright protection of the plaintiff.
Procedure for filing Copyright
Now we will discuss the procedure of Copyright filing in India. The procedure of copyright registration is contained under Chapter 10 and from Section 44 to Section 50A of The Copyrights Act, 1957.
Filing of Application – The author of the work has to file the copyright application along with the prescribed amount of fees; in return, a unique number will be given to the applicant.
Examination – Next step will be the Examination stage. Within 30 days the application is reviewed and scrutinized by the examiner.
Objections – If any objection arises the registrar will call the applicant for a hearing and if he is satisfied then further procedure will be followed otherwise if he is not satisfied the application will be rejected.
Registration and Publication – Here the procedure comes to an end. After the registrar is satisfied with all the documents presented, all the details with regard to the copyright claim will be jotted down in the register of copyrights maintained by the copyright office. The certificate of registration will be provided to the applicant. Thereafter, the particulars of the work will be published in the official gazette in the prescribed form by the registrar of the copyrights. The certificate is granted for life plus 60 years after the death of the applicant.
Patents in Fashion Industry
Patents are protected in accordance with the provisions of the Patents Act, 1970. Patent as defined in the act means a Patent for any invention granted where the Invention means a new product or process involving an inventive step and capability of industrial application. One might think that patents are not very relevant when it comes to the fashion industry and its procedure is either way too expensive or strenuous but we argue otherwise. Technical innovation can always put a fashion brand on the top of the heap and attracts investors as well.
In Patents, there are two subcategories named Utility Patent and Design Patents. One must file for Utility Patent if they have created some unique, non-obvious process or machinery for the production of the commodities. Wrinkled-free garments, stone-washed denim jeans, collapsible shoes, and Nike’s automatic lacing system are instances of Utility patents. One must file for Design Patent if they have created any non-functional or aesthetic features in their invention for instance Beverage holding sweatshirt. Recently people have been fighting legal battles on their design patents like:
Puma filed a suit against Forever 21 for the infringement of its design patent. Puma launched a new range of shoes such as Creeper Sneaker, Fur Slide, and Bow Slide which were designed by Rihanna Fenty and because of which these were named Fenty Shoes. Soon after, Forever 21 launched its shoe range which was similar to those of puma’s Fenty shoes.
The court held that the dissimilarities between the two are too less and any ordinary observer cannot differentiate between them. Hence, Puma’s claims regarding design patent infringement were upheld.
A company named TTC sent a cease and desist letter to the company named Spanx for the infringement of their Design Patent and asked them to cease three-panel designs of slimming tank tops which are already patented in their company’s name and to pay damages for the same. Spanx in order to seek declaratory pronouncement proceeded against TTC and argued that there are substantial differences from the former’s design. The suit was concluded by settlement.
Procedure of Filing Patents
Here we discuss, the procedure of Patent Filing in India. The procedure of Patent registration is contained under Chapter 2 to Chapter 8 of The Patents Act, 1970.
Patentability Criteria – Before going forward with the invention, one must know that all patents are not patentable. So it is mandatory to know what subject matter leads to patent registration and what not.
Search and Draft – This is the key procedure in patent registration. This will let the inventor(s) know if the patent is novel and non-obvious or not. This step is highly recommended because it warns the inventor about all the prior inventions known to the public related to that of the inventor. This is going to help in drafting the patentability report.
Filing of Application – Now from here the actual procedure begins. After the drafting is completed the application should be filed with the government Patent Office. Now, there are two patent applications the inventor can file, one is a provisional patent application which is filed so that no third party can claim a patent over the same idea and the other is a complete specification which is filed once the invention is completed. The date of application filling will be deemed to be the date of registration.
Publication – After 18 months of filing the complete specification, the application is published. There is a special provision for publishing it before 18 month time period requiring an official request by the inventor and payment of prescribed fees for it.
Examination – Then the applicant has to request the examination of the patent application in the patent office. The patent examiner reviews the application with several criteria and makes a detailed First Information Report.
Response to Objections – If any objection arises by the way of the examiner’s report then the applicant has to file a response for that matter, which states all the possible contentions which negate the objections made against the application.
Grant of Patent – After fulfilling all the objections raised in the last step and succeeding, therefore, the patent is granted to the applicant. Following this, the patent is published in the patent journal for the public to know. The patent is enjoyed by the inventor for a period of 20 years in India and after the expiry, it goes straight into the public domain.
The Fashion Industry is a reflection and inspiration of dreams because it defines a lot of people and a lot of people. The fashion industry has 100% participation and is not going away anytime soon whether it is in stores, digital stores, or social networking stores (like Instagram). The key source of competitiveness advantage one business has over the other in the Fashion Industry is innovation and the creative way of expressing it. Fashion is unpredictable and keeps on evolving and to catch up with the demands, it leads to the theft of one’s blood, sweat, and tears. Designers in order to cope with the changing trends, find it expensive to chase counterfeiters both financially and time-wise. Even if they do so and sue all the counterfeiters, it takes years for the judges to give their judgment as they are backed up with many more cases.
As stated by many fashion designers themselves, they find it unreasonable to protect the designs which have such short product life cycles and so they hesitate to put their hard-earned money and considerable time into it. Today, technological advancement by leaps and bounds has not only ensured a positive impact on marketing and sales in the apparel industry but also leaves a negative impact as it reaches a wider audience which leads to an increase in chances of the market flooding with fakes and copied designs.
Another limitation posing a barrier to IP protection is the territorial nature of the intellectual property which means the protection is confined to the territories of one country only where it is registered and if it is breached in another country then the remedies would not be available until and unless the IP is protected as per the laws in that particular country. Hence, there is no specific legislation meant for the protection of intellectual property in the fashion industry and fast-track courts for such matters but we hope to see that soon. Till then we should keep educating and training fashion designers about their present rights. It is necessary for all the owners in the fashion industry to seek advice regarding IP protection to increase sales, boost income, increase their profit margins and discourage all competitors from copying it.
Submitted by Himanshi Jain, a fourth year law student pursuing B.A.LL.B. from Delhi Metropolitan Education, Noida.