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Intellectual Property Rights Protection of Fashion Design in India

: A Panoramic View

By Shishir Tiwari*

I. Prolegomena

Fashion in India originated thousands of years ago with magnificent traditions

behind it. India has a rich and varied textile heritage where each region and state has

its own unique native costume and traditional attire and accessories. In this

globalised era, the apparel and accessory segment in India is enhancing itself at a

rapid pace with international developments. Fashion industry in India is growing day

by day and it has experienced significant expansion in the last decade mainly driven

by the growth of domestic designers, some of whom have gained international

recognition in recent years.1 The growth of the Indian fashion industry is highlighted

by the increase in the number of large fashion events (from 1 in 2004 to 5 in 2013).2

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 2020.3 Although, the

contribution of the Indian designer wear industry in the global market4 is a minimal

0.32% but it is expected to reach 1.7% by 2020.

* Assistant Professor, Department of Law, North-Eastern Hill University, Shillong793022 INDIA and Member, Asian Society of International Law; E-mail:shishirlaw@gmail.com.1 Grail Research (2009), The Global Fashion Industry – Growth in Emerging Markets (ResearchReport), 1-22, available at,<http://www.grailresearch.com/pdf/ContenPodsPdf/Global_Fashion_Industry_Growth_in_Emerging_Markets.pdf> (accessed on 24/12/2013), p. 16.2 The five large Indian fashion events are as follows: (1) Indian Bridal Fashion Week, (2) BangaloreFashion Week, (3) Wills Lifestyle India Fashion Week, (4) Blenders Pride Indore Fashion Week & (5)Lakme Fashion Week.3 “Indian Designer wear industry growing at CAGR of 40%”, available at,<http://www.retailangle.com/Newsdetail.asp?Newsid=3712&Newstitle=Report_%96_Indian_Designer_wear_industry_growing_at_CAGR_of_40%> (accessed on 24/12/2013).4 The global designer wear market is estimated at more than Rs. 2.2 lakh crores in 2012 and is said tobe growing at a compounded growth rate of 12%. By the year 2020, the industry is estimated to growover Rs. 6.1 lakh crores.

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On the one side, the Indian fashion industry is thriving; on the other hand it is

beleaguered by the menace of piracy in fashion design.5 The industry people,

particularly fashion designer, have been found complaining about their innovations

being imitated and copied. Fashion industry has long being known for its

omnipresent nature of copying original fashion designs and ample availability of

sophisticated software technology has made this practice of copying very easy.

Fashion design, being considered as the creation of one’s intellectual innovation and

original creativity, has escalated concern and demand apropos the Intellectual

Property Rights (IPRs) Protection of fashion design. Against this backdrop, the

present paper makes a modest attempt to analyse the present IPRs regime protecting

fashion designs in India in a systematic manner. However, before delineating this, it

is pertinent to explicate in brief the notion of “fashion”, “fashion design” and “fashion

design piracy” as they have been used throughout this paper. Further, paper also

explores the overall arguments for IPRs protection in the fashion industry.

II. Understanding “Fashion” and “Fashion Design”

Fashion is an art, a reflection of life. It is a language of signs, symbol and

iconography that non-verbally communicate meanings about individuals and groups.

It is a mode of expressing oneself and serves as an extension of one’s personality.

Fashion may vary considerably within a society according to age, social class,

generation, occupation and geography as well as over time. It changes constantly and

the changes may proceed more rapidly than in most other fields of human activity. In

common parlance, fashion refers to a popular way of dressing during a particular

time or among a particular group of people.6 However, it is more than that and is

best defined simply as the style or styles of clothing and accessories worn at any

given time by groups of people.7 It also covers in its ambit footwear and jewelleries.8

5 The gravity of this problem can be well understood by a statement made way back in 1993 by NareshGujral. Gujral was at the helm of affairs of SPAN India, woman's clothing line and one of the largergarment export companies in India, at that time. He said, “We make Rs.30 crore a year. It would beRs.500 crore, were there no copies”. “Cloak-and-dagger capers”, available at,<http://indiatoday.intoday.in/story/fashion-piracy-design-spies-copy-outfits-for-entrepreneurs-too-lazy-to-create-their-own/1/301643.html> (accessed on 24/12/2013).6 Merriam-Webster Online: Dictionary and Thesaurus, available at, <http://www.merriam-webster.com/dictionary/fashion> (accessed on 24/12/2013).7 “Fashion Industry”, in Encyclopaedia Britannica Online, available at,<http://www.britannica.com/EBchecked/topic/1706624/fashion-industry> (accessed on24/12/2013).8 To understand the various dimension of the world of fashion in detail, visit <http://www.fashion.net/>.

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Fashion, in brief, refers to anything that is the current trend in look and dress up of a

person.

Fashion design is the application of design and aesthetics beauty to the items of

fashion. It is a form of art dedicated to the creation of original clothing and other

lifestyle accessories.9 Considered as “principle creative element” of fashion

industry10, a fashion design is influenced by cultural and social attitudes and has

varied over time and place. Modern fashion design11 is divided into three basic

categories: (1) haute couture, (2) ready-to-wear and (3) mass market.

The haute couture (made to measure) collection is dedicated to certain

customers and is custom sized to fit these customers exactly. Until 1950 fashion

clothing was designed and manufactured on Haute Couture basis. A Couture

garment was made to order for an individual customer from high quality, expensive

fabric, sewn with extreme attention to detail and finish, using time consuming

techniques. In order to qualify as a haute couture house, a designer has to be part of

the Syndical Chamber for Haute Couture12 and show a new collection twice a year

presenting a minimum of 35 different outfits each time. Ready-to-wear collections

are not made for individual customers but it is made in small quantities to guarantee

exclusivity. Clothes part of these collection are standard sized, not custom made, so

they are more suitable for large production runs. They are usually presented by

fashion houses during the fashion week. They are divided into two categories:

designer/createur and confection collections. Designer collections have a higher

quality and finish as well as an unique design. They often represent a certain

philosophy and are created to make a statement rather than for sale. Both ready-to-

wear and haute-couture collections are presented on international catwalks. The

9“What is fashion design?”, available at, < http://www.fibre2fashion.com/industry-article/7/605/what-is-fashion-design1.asp> (accessed on 24/12/2013).10 Kal Raustiala and Christopher Sprigman (2006), note 19, p. 1689.11 Fashion design is generally considered to have started in 19th century. Charles Fredrick Worth wasthe first designer to have his label sewn into the garment that he created. He set up a fashion house inParis. It was he who started the tradition of fashion houses and telling his customers what kind ofclothing would suit them. Earlier clothing design and creation was handled by anonymousseamstresses and high fashion was that which was worn at Royal Courts. Clothing created only after1858 is considered as fashion design. The traditions of designers sketching out garment designsinstead of presenting completed garments on models to customers also began during this period. See“Fashion designing - the then and now”, available at, < http://www.fibre2fashion.com/industry-article/15/1482/fashion-designing-the-then-and-now1.asp> and “History of fashion design”, availableat, <http://en.wikipedia.org/wiki/History_of_fashion_design>.12 Established in the year 1868, Syndical Chamber’s headquarter is located at Paris. For moreinformation about it, visit < http://www.modeaparis.com/en/federation/>.

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Mass Market caters for a wide range of customers using cheaper fabrics and simpler

production techniques.

To conclude, fashion design represents human intellect and creativity. And this

creativity comes to the fore in tangible form on the products of fashion.

III. Fashion Design Piracy

Piracy is “[t]he unauthorized and illegal reproduction or distribution of materials

protected by copyright, patent, or trademark law”.13 It is an act in which

unauthorized copies are made of any intellectual property.14 In other words,

unauthorised copying is the essence of piracy. In the context of fashion industry,

piracy includes: (1) piracy in fashion design & (2) piracy in logo or label of fashion

brand. Fashion design piracy (FDP) involves unauthorised copying of original

fashion designs. And generally it falls into one of the two following categories: (1)

knockoffs & (2) counterfeits.

Knockoff is a copy or imitation of someone or something popular 15 and it is

produced illegally without a license.16 In the fashion world, 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. Knockoffs are intended to replicate the original design nearly

line for line but with another designer’s name attached.17 A line-for-line copy is a

nearly identical imitation of an original design.

In contrast to knockoff, a counterfeit is a copy of the original fashion design as

well as brand logo or label of that design. Here, intention is to deceive buyers of the

apparel’s true content and origin both.18 And counterfeit apparel is sold in an attempt

13 Black's Law Dictionary (Ninth Edition, 2009), p. 1266.14 Free Online Legal Dictionary, available at, <http://thelawdictionary.org/piracy-2/> (accessed on24/12/2013)15 Merriam-Webster Online: Dictionary and Thesaurus, available at, <http://www.merriam-webster.com/dictionary/knockoff> (accessed on 24/12/2013).16 Webster's 1913 Dictionary, available at, <http://www.webster-dictionary.org/definition/knockoff>(accessed on 24/12/2013).17 Sara R. Ellis (2010), “Copyrighting Couture: An Examination of Fashion Design Protection And WhyThe DPPA And IDPPPA Are A Step Towards The Solution To Counterfeit Chic”, Tennessee LawReview, 78: 163-211, p. 168.18 Biana Borukhovich (2008-09), “Fashion Design: The Work of Art that is Still Unrecognized in theUnited States”, Wake Forest Intellectual Property Law Journal, 9(2): 155-176, p. 156. See also Sara R.Ellis (2010), note 10, p. 167; Elizabeth Ferrill & Tina Tanhehco (20011), “Protecting the MaterialWorld: The Role of Design Patents In the Fashion Industry”, North Carolina Journal of Law &Technology, 12(2): 251-300, p. 254.

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to pass as the original. This situation involves piracy in fashion design besides piracy

in logo or label of fashion brand. However, all the counterfeits do not embrace this

type of blend as in some of the cases only fashion brand labels are copied. Those

cases represent purely a piracy in logo or label of fashion brand (see Figure 1).

Figure 1: Piracy in Fashion Industry

IV. Justifications for Intellectual Property Rights Protection for theFashion Design

As a product of human intellect and creativity, fashion design is an apt subject matter

for IPR protection without any iota of doubt. However, on the issue pertaining to the

need for fashion design protection under the IPR regime, consensus is eluding.

Conflicting views have been made on this issue as some of them validate the urgent

need for IPR protection for fashion design and, on the other hand, some does not see

Design Copying[Knockoffs]

Copying of Brand Logoor Label

[Counterfeits]

Copying of Design and BrandLogo Both [Counterfeits]

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any such requirement. Examining the need for IPR protection for fashion industry in

general and fashion design in particular, plethora of articles has been written in

favour of19 as well as against20 such protection.

The opponents of IPR protection for fashion design argue that as fashion

industry is thriving, IPR protection is not necessary. Rather, they claim, absence of

IPR protection encourages fashion designer to innovate new designs which

ultimately leads to the growth of the fashion industry. In a scholarly article,

supporting this view, Rausiala and Springman21 point out to the “angelic” qualities of

“piracy” and substantiate that piracy in fashion design may indeed prove more a

boon than a bane for fashion industry.22 Elucidating it further, they write:

. . . [T]he absence of [ IPR] protection for creative designs and the regime offree design appropriation speeds diffusion and induces more rapidobsolescence23 of fashion designs. . . . The fashion cycle is driven faster . . . by

19 See, e.g., Julie P. Tsai (2005), “Fashioning Protection: A Note on the Protection of Fashion Designsin the United States”, Lewis & Clark Law Review, 9(2): 447-468; Susan Scafidi (2008), “F.I.T.:Fashion As Information Technology”, Syracuse Law Review, 58: 69-90; Biana Borukhovich (2008-09), “Fashion Design: The Work of Art that is Still Unrecognized in the United States”, Wake ForestIntellectual Property Law Journal, 9(2): 155-176; C. Scott Hemphill & Jeannie Suk (2009), The Law,Culture, and Economics of Fashion”, Stanford Law Review, 61:1147-1200; Lauren Howard (2009),“An Un-Ingenious Paradox: Intellectual Property Protections for Fashion Designs”, Columbia Journalof Law & the Arts, 32(3): 333-363; Erika Myers (2009), “Justice in Fashion: Cheap Chic and theIntellectual Property Equilibrium in the United Kingdom and the United States, AIPLA QuarterlyJournal, 37(1): 47-81; N. Elizabeth Mills (2009), “Intellectual Property Protection for Fashion Design:An Overview of Existing Law and A Look Toward Proposed Legislative Changes”, Shidler Journal ofLaw, Commerce & Technology (now known as Washington Journal of Law, Technology & Arts),5(5), available at, <http://digital.law.washington.edu/dspace-law/bitstream/handle/1773.1/438/vol5_no5_art24.pdf?sequence=1>; Kimberly A. Harchuck (2010),“Fashion Design Protection: The Eternal Plight of the “Soft Sculpture” ”, Akron Intellectual PropertyJournal, 4: 73-118; Kristin L. Black (2010), “Crimes of Fashion: Is Imitation Truly the Sincerest Formof Flattery?”, Kansas Journal of Law and Public Policy, 29(3): 505-527; Daryl Wander (2010),“Trendsetting: Emerging Opportunities for the Legal Protection of Fashion Designs”, Rutgers LawJournal, 42: 247-293; Sara R. Ellis (2010), “Copyrighting Couture: An Examination of Fashion DesignProtection and Why the DPPA and IDPPPA Are a Step Towards the Solution to Counterfeit Chic”,Tennessee Law Review, 78: 163-211; Elizabeth Ferrill & Tina Tanhehco (2011), “Protecting theMaterial World: The Role of Design Patents in the Fashion Industry”, North Carolina Journal of Law& Technology, 12(2): 251-300; Alexandra Mackey (2012), “Made in America: A Comparative Analysisof Copyright Law Protection for Fashion Design in Asia and the United States”, American UniversityBusiness Law Review, 1(2): 368-396; Jessica Rosen (2013), “The Inability of Intellectual Property toProtect the New Fashion Designer: Why the ID3PA Should Be Adopted”, Golden Gate University LawReview, 43(2): 327-353.20 See, e.g., Kal Raustiala and Christopher Sprigman (2006), “The Piracy Paradox: Innovation andIntellectual Property in Fashion Design”, Virginia Law Review, 92(8):1687-1777; Kal Raustiala &Christopher Sprigman (2009), “The Piracy Paradox Revisited”, Stanford Law Review, 61(5): 1201-1225; Katelyn N. Andrews (2012), “The Most Fascinating Kind of Art: Fashion Design Protection as aMoral Right”, N.Y.U. Journal of Intellectual Property & Entertainment Law, 2: 188-226.21 Kal Raustiala and Christopher Sprigman (2006), note 19.22 Shamnad Basheer (2007), “The Piracy Paradox: "Fashionable" IP”, available at,<http://spicyip.com/2007/09/piracy-paradox-fashionable-ip.html> (accessed on 14/01/2014).23 According to Rausiala and Springman, free appropriation of clothing designs contributes to morerapid obsolescence of designs in at least two broad ways. Firstly, copying often results in themarketing of less expensive versions, thus pricing- in consumers who otherwise would not be able to

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widespread design copying, because copying erodes the positional qualities offashion goods. Designers in turn respond to this obsolescence with new designs.In short, piracy paradoxically benefits designers by inducing more rapidturnover and additional sales.24

However, the views of Rausiala and Springman are far from perfect. Their whole

thesis that copying of fashion design is advantageous for the fashion industry hence

it should be allowed and IPR protection to fashion design should be avoided is

essentially based upon “trickle-down theory”25 of fashion change. According to them,

copying of fashion design occurs between highest to lower layers of fashion industry.

Conversely, critics are of the view that it occurs between all layers of the fashion

industry, not just from the highest to the lowest.26 Extension of IPR protection for

fashion design might not be beneficial for well-known fashion designers, but it is

certainly important for un-established designers and small business owners, who

suffer all the competition and overexposure burdens of copying without the benefit of

increased prestige.27

The proponents of IPR protection for fashion design acknowledge that fashion

industry is one of the world's most important creative industries. According to them,

designs, which are at the heart of fashion, are difficult and expensive to create, but

relatively easy and inexpensive to copy. In the absence of IPR protection, they argue,

copyists will free-ride on the efforts of creators, discouraging future investments in

new inventions and creations. In short, copying stifles innovation.28 They claim that

IPR protection for fashion designs would encourage greater innovation by ensuring

that the profits from a design went to the designer and not to those who merely

copied the work.29 The proponents of increased protection for fashion design argue

that copying technology-particularly the speed with which images of designs from

consume the design. What was elite quickly becomes mass. And secondly, many "copies" are notpoint-by-point reproductions at all, but instead new garments that appropriate design elements fromthe original and recast them in a derivative work. Thus, a regime of free appropriation contributes tothe rapid production of substantially new designs that were creatively inspired by the original design.See Kal Raustiala and Christopher Sprigman (2006), note 19, p. 1722 & 1724.24 Ibid., p. 1722.25 As per “trickle-down theory”, fashion begins at the top of the class structure & spreads downward,slowly, through the class structure.26 Erika Myers (2009), note 19, p. 58.27 Ibid.28 For a detailed account of the threat to innovation posed to fashion industry by unregulated fashiondesign copying on a large scale, see C. Scott Hemphill & Jeannie Suk (2009), note 19.29 Statement of Susan Scafidi, Academic Director, Fashion Law Institute, Fordham University, atHEARING Before The Subcommittee On Courts, The Internet, And Intellectual Property Of TheCommittee On The Judiciary House Of Representatives One Hundred Ninth Congress SecondSession On H.R. 5055 on 27 July 2006 (hereinafter HEARING], available at,<http://www.gpo.gov/fdsys/pkg/CHRG-109hhrg28908/html/CHRG-109hhrg28908.htm> (accessedon 14/01/2014).

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runway shows can be sent around the world via the internet-has changed so

drastically in recent years that designers are suffering unprecedented harm that must

be rectified by IPR protection. 30 They maintain that IPR protection is especially

required for un-established designers and labels as copying stymies their efforts to

build a brand.31

V. Protection of Fashion Design under the Indian Intellectual Property

Rights Regime

The IPR Regime in India provides protection to the fashion design under three

different legislations, viz., the Designs Act, 2000, the Indian Copyright Act, 1957 and

the Trade Marks Act, 1999. These legal instruments can be discussed under following

heads: (1) Industrial design protection for fashion design, (2) Copyright protection

for fashion design and (3) Trademark protection for fashion design.

A. Industrial Design Protection for Fashion Design

Industrial designs32 protection is the most widely used legal protection model for

fashion design. Most countries protect fashion design as industrial designs. In India,

the law relating to the protection of industrial designs has been laid down in the

Designs Act, 2000.33 And this is the primary law employed by fashion designers to

protect their fashion designs.

The Designs Act affords protection to the “design” registered under the Act.

Section 2 (d) of the Designs Act defines the term “design” as follows:

30 Katelyn N. Andrews (2012), note 20, p. 190.31 Statement of Jeffrey Banks, fashion designer, at HEARING, Note 29.32 Industrial design is the ornamental or aesthetic aspect of a useful article.32 The ornamental aspectmay consist of the shape and/or pattern and/or colour of the article. To be considered as an industrialdesign, a design must satisfy the following two conditions:

1) The ornamental or aesthetic aspect must appeal to the eye. In other words design must bejudged solely by the eye and not by any functional considerations. The words ‘judged solely bythe eye’ intend to exclude cases where a customer might choose an article of that shape notbecause of its appearance but because of the shape that made it more useful to him [Amp.vs.Utilux (1972) RPC103 at 108(HL)]. The customer must be influenced only by the eye and notby the suitability of the article for any purpose. However, certain design features of an articlemay perform a useful purpose whilst also affecting the appeal of the article to the potentialcustomer.

2) The article must be reproducible by industrial means. If this element is missing, the creationmay rather come under the category of art, whose protection is assured by copyright law,rather than by a law on industrial property.

See, World Intellectual Property Organization (WIPO) (1988), Background Reading Material OnIntellectual Property, Geneva: WIPO, p. 189.33 Enacted on 25th May 2000, the Designs Act came into force on 11th May 2001. Full text of the Act isavailable at, < http://www.ipindia.nic.in/ipr/design/design_act.PDF>.

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“[D]esign” means only the features of shape, configuration, pattern, ornamentor composition of lines or colours applied to any article whether in twodimensional or three dimensional or in both forms, by any industrial process ormeans, whether manual, mechanical or chemical, separate or combined, whichin the finished article appeal to and are judged solely by the eye; but does notinclude any mode or principle of construction or anything which is in substancea mere mechanical device, and does not include any trade mark as defined inclause (v) of sub-section (1) of section 2 of the Trade and Merchandise MarksAct, 1958 or property mark as defined in section 479 of the Indian Penal Codeor any artistic work as defined in clause (c) of section 2 of the Copyright Act,1957.

It means that not every design but only those designs which fit into the definition of

“design” as provided under Section 2 (d) of the Act can be registered under the

Designs Act. Apart from it, a design, to get registration and, consequently, to get

protection under the Designs Act, must satisfy the ensuing conditions as well:

1) It must be new or original.

2) It must not have been disclosed to the public anywhere in India or in any

other country by publication in tangible form or by use or in any other way

prior to the date of filing for registration.

3) It must be significantly distinguishable from known designs or combination of

known designs.

4) It must not comprise or contain scandalous or obscene matter.34

From the perspective of fashion industry, the Act does not protect the entire garment

as a whole; rather, it only protects the particular/individual aspects like shape,

pattern, colour etc. of the garment. Moreover, to be protected under the act, these

particular aspects must not only satisfy the definition of “design” as provided under

the Act but must also be registered under the Act.

Under the Act, the proprietor35 of a registered design gets copyright in the

design which means the exclusive right to apply the design to any article in any class

34 See the Designs Act, Section 4.35 Section 2 (j) of the Designs Act explains “proprietor of a new or original design” in the followingterms:

(i) where the author of the design, for good consideration, executes the work for some otherperson, proprietor means the person for whom the design is so executed;

(ii) where any person acquires the design or the right to apply the design to any article, eitherexclusively of any other person or otherwise, proprietor means, in the respect and to theextent in and to which the design or right has been so acquired, the person by whom thedesign or right is so acquired; and

(iii) in any other case, proprietor means the author of the design; and where the property in or theright to apply, the design has devolved from the original proprietor upon any other person,includes that other person.

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in which the design is registered.36 It means the Act affords protection not in a

particular article but against a class of articles as enumerated in Schedule III of the

Designs Rules, 2001.37 Goods manufactured by the fashion designers may fall under

the following classes of goods:

1) Class 2: Articles of clothing and haberdashery - undergarments, lingerie,

corsets, brassieres, nightwear; headwear; footwear, socks and stockings;

neckties, scarves, neckerchiefs and handkerchiefs; gloves; haberdashery and

clothing accessories including buttons, clasps for garments, for headwear and

for footwear, laces, pins, hand sewing, knitting and embroidery equipment

and clothing accessories such as belts, suspenders, braces etc.

2) Class 3: Travel goods, cases, parasols and personal belongings, not elsewhere

specified - trunks, suitcases, briefcases, handbags, key-holders, cases specially

designed for their contents, wallets and similar articles; umbrellas, parasols,

sunshades and walking sticks; fans etc.

3) Class 5: Textile piece-goods, artificial and natural sheet material – lace

embroidery; ribbons, braids and other decorative trimmings; textile fabrics

etc.

4) Class 10: Clocks and watches and other measuring instruments, checking

and signaling instruments - watches and wrist watches etc.

5) Class 11: Articles of adornment – jewelry etc.

As per the provisions of the Designs Act, copyright in the registered design subsists

for a period of ten years from the date of registration38 and may be extended further

for a second period of five years on the application regarding the same.39 During the

existence of copyright in registered design, the Designs Act protects registered design

from piracy.40 If a person commits any act involving piracy of registered design, he is

36 Ibid., Section 11 (1).37 The Design Rules were framed by the Central Government in exercise of the powers conferred bySection 47 of the Designs Act. These Rules are available at,<http://www.ipindia.nic.in/ipr/design/des_rule.PDF>. These Rules were amended in the year 2008.The Design (Amendment) Rules are available at,<http://www.ipindia.nic.in/ipr/design/DesignRules_28Jul2008.pdf>.38 The Designs Act, Section 11 (1).39 Ibid., Section 11 (2).40 Section 22 (1) of the Designs Act explains “piracy of registered design”. Any one of the followingacts amount to piracy:

1) The application of the design or any fraudulent or obvious imitation thereof to any article inany class of articles in which the design is registered for the purpose of sale except with thelicence or written consent of the registered proprietor or doing anything with a view to enablethe design to be applied as aforesaid.

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liable, on every act of piracy, to pay to the registered proprietor of the design a sum

not exceeding twenty five thousand rupees recoverable as a contract debt or if the

proprietor elects to bring a suit for the recovery of the damages for any such act

involving piracy, and for any injunction against thereof, to pay such damages as may

be awarded and to be restrained by injunction accordingly and the total sum

recoverable shall not exceed fifty thousand rupees.41 Proprietor of the registered

design has to institute the suit in any court not below the court of District Judge.42

The above-mentioned provisions of the Designs Act lay down in detail the

mechanism to check piracy of registered design. However, they do not suit the needs

of the fashion designing industry on account of three reasons.

1. No protection to unregistered designs

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. They cannot file a suit for the recovery of damages for

unauthorized copying of their designs and for an injunction against the repetition

thereof. Considering the dynamic nature of fashion industry where fashion design

houses come up with a fresh collection of fashion items at a regular interval usually

every season, fashion designers need automatic and immediate protection

independent from registration for their designs. And in the absence of the concept of

unregistered design protection, the Design Act is unable to provide the same.

Further, it deprives the designers of the privilege of putting their innovative creations

to the market, observing the reaction to the same and then deciding whether the

particular design in question is worth registration or not.

On affording protection to the unregistered design, at this juncture, one may

compare the Designs Act of India with the laws relating to industrial designs

protection of European Union and United Kingdom and United States of America’s

proposed legislations providing sui generis protection to fashion designs.

(a) European Union

2) The import for the purpose of sale, any article, belonging to the class in which the design hasbeen duly registered, on which is applied the registered design or fraudulent or obviousimitation thereof.

3) The publication or exposure or causing to publish or exposure for sale a pirated articleknowing that it is a pirated article.

41 Ibid., Section 22 (2).42 Ibid., Second proviso to Section 22 (2).

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The European Union (EU) is a unique economic and political partnership between

28 European countries that together cover much of the European continent.43 In the

EU, industrial designs rights are provided at both the Community level by virtue of

the Community design and at the national level under individual national laws. A

Community design is a unitary industrial designs right that has equal effect across

the EU and regulated by Council Regulation (EC) No 6/2002 of 12 December

2001 on Community designs [hereinafter 2002 Regulation].44

The 2002 Regulation includes provisions relating to “registered Community

design protection” and “unregistered community design protection” for designs.45 On

one hand, a registered Community design confers on its holder the exclusive right to

use it and to prevent any third party not having his consent from using it. The term

“use” covers the making, offering, putting on the market, importing, exporting or

using of a product in which the design is incorporated or to which it is applied, or

stocking such a product for those purposes.46 On the other hand, an unregistered

Community design confers on its holder the right to prevent the acts referred above

only if the contested use results from copying the protected design.47 However, if the

design has been created independently by a second designer i.e. the designer shows

that he/she was not aware of the existence of the protected design, the contested use

is not deemed to result from copying. 48

Unregistered Community design protects a design for a period of three years

from the date on which the design was first made available to the public within the

Community.49 Although, unregistered Community design protection is shorter and

limited in comparison to the term of the registered community design protection

which provides total twenty five years protection from the date of filing of the

application,50 but it is more suitable to those industries which are producing large

43 “How the EU works?”, available at, <http://europa.eu/about-eu/index_en.htm> (accessed on15/01/2014).44 Full text of the 2002 Regulation is available at, <http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2002:003:0001:0024:EN:PDF>.45 Article 3 (a) of the 2002 Regulation defines “design” as follows:

‘[D]esign’ means the appearance of the whole or a part of a product resulting from the featuresof, in particular, the lines, contours, colours, shape, texture and/or materials of the productitself and/or its ornamentation.

46 2002 Regulation, Article 19 (1).47 Ibid., Article 19 (2).48 Ibid., Proviso attached to the Article 19 (2).49 Ibid., Article 11 (1)50 Ibid., Article 12

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numbers of possibly short-lived designs over short periods of time particularly

fashion industry.

(b) United Kingdom

In United Kingdom (UK), the law relating to the protection of industrial designs has

been laid down in two different legislations: (1) The Registered Designs Act, 1949 and

(2) The Copyright, Designs and Patents Act, 1988.

The Registered Designs Act, 194951, as amended by the Regulatory Reform

Order 2006, provides for the registration of designs and the protection of registered

designs. Whereas, the Copyright, Designs and Patents Act, 1988 [hereinafter

CDPA]52 governs the provisions for design rights which subsist in an unregistered

design53 in the UK. Under the Act, design right lasts either for ten years after the first

marketing of articles that use the design, or fifteen years after creation of the design,

whichever is earlier.54 The owner of design right in an unregistered design has the

exclusive right to reproduce the design for commercial purposes by making articles

to that design.55 Reproduction of a design means copying the design so as to produce

articles exactly or substantially to that design.56 In other words, an unregistered

design right is limited in nature. It does not allow monopoly rights but the owner is

protected from copying of his/her design.

If a person without the licence of the design right owner does the exclusive right

of the design right owner, he/she infringes the design right in the design.57 Hence,

the fashion designers in the UK are comfortably protected from the evil of piracy as

they may institute a suit for infringement of their design right and may get relief by

way of damages, injunctions, accounts or otherwise under the CDPA without having

to go through the pain of registration of design.58

(c) United States of America

51 The full text of the Registered Designs Act, 1949 is available at,<http://www.ipo.gov.uk/regdesignactchanges.pdf>.52 The full text of the CDPA is available at,<http://www.legislation.gov.uk/ukpga/1988/48/contents>. Part III of the CDPA deals with the“Design Rights”.53 Section 213 (2) of the CDPA defines the term “design” as follows:

“[D]esign” means the design of any aspect of the shape or configuration (whether internal orexternal) of the whole or part of an article.

54 CDPA, Section 216.55 Ibid., Section 226 (1).56 Ibid., Section 226 (2).57 Ibid., Section 226 (3).58 Ibid., Section 229.

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The Innovative Design Protection and Piracy Prevention Act, 2011 [hereinafter

ID3PA]59 and the Innovative Design Protection Act, 2012 [hereinafter IDPA]60 are

two Bills seek to amend Copyright Law of the United States (Title 17, United States

Code) to extend sui generis protection to fashion design. Except few minute

differences, both the Bills are similar. A comprehensive definition of the term

“fashion design” has been provided under them in the following way:

A “fashion design”—

(A)is the appearance as a whole of an article of apparel, including itsornamentation; and

(B)includes original elements of the article of apparel or the originalarrangement or placement of original or non-original elements asincorporated in the overall appearance of the article of apparel that—

(i) are the result of a designer’s own creative endeavour; and(ii) provide a unique, distinguishable, non-trivial and non-utilitarian variation over prior designs for similar types of articles.61

Both the Bills seek to protect, without registration, the fashion design apparel from

another which is “substantially identical”62 for a period of three years from the date

the design is first made public.63 A design shall not be deemed to have been copied

from a protected design if that design—(a) is not substantially identical in overall

visual appearance to and as to the original elements of a protected design; or (b) is

the result of independent creation

These Bills are audacious attempts to protect fashion designs exclusively and

when passed and come into force, they would certainly facilitate increased design

innovation and also dissuade knock offs.

59 ID3PA was introduced in the House of Representatives on 13 July 13 2011. Full text of the ID3PA isavailable at, < https://www.govtrack.us/congress/bills/112/hr2511/text>.60 IDPA was introduced in the Senate of the United States on 10 September 2012. Full text of the IDPAis available at, < https://www.govtrack.us/congress/bills/112/s3523/text>.61 Section 2 (a) (2) of ID3PA and IDPA. Under both the Bills, the term “apparel” means—

(A) an article of men’s, women’s, or children’s clothing, including undergarments, outerwear,gloves, footwear, and headgear;

(B) handbags, purses, wallets, tote bags, and belts; and(C) eye-glass frames.

62 The term “substantially identical” means an article of apparel which is so similar in appearance as tobe likely to be mistaken for the protected design, and contains only those differences in constructionor design which are merely trivial.63 Explaining “when design is made public?”, Section 1310 (b) of the Copyright Law of the UnitedStates provides:

A design is made public when an existing useful article embodying the design is anywherepublicly exhibited, publicly distributed, or offered for sale or sold to the public by the owner ofthe design or with the owner’s consent.

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To conclude, it is very much obvious that in comparison to the Designs Act of

India, 2002 Regulation of EU, CDPA of UK and ID3PA and IDPA of USA establishes

an effective and efficient regime for the protection of fashion design industry as they

render protection against copying of unregistered designs. For the dynamic and

cyclic nature of fashion design industry, a protection, which is limited both in nature

and period, without going through the hassles of registration is the best way to

encourage innovation and creativity but Designs Act fails on that account.

2. Time consuming registration process

In order to avail protection against piracy under the Designs Act, design registration

is pre-requisite. For fashion designers, this process is of very little use. The process of

registration as elaborated in the Act and the Designs Rules (see Figure 2) is

intricate and time consuming hence not favorable to the needs of dynamic fashion

design industry. The whole process of design registration in India (i.e. from the filing

of application till the grant of certificate of registration) takes about 10 to 12 months.

And that is problematic because the projected life of a piece of garment in a designer

store lasts for a maximum period of one season which is three to four months.64 In

this backdrop, a designer is left with only one option that is to apply for design

registration much before the expected date of presentation of his/her designs to the

market. This ensues into another challenge relating to the maintenance of secrecy

about designs’ features. During the pendency of the application, fashion design

remains susceptible to exploitation by the employees of the designers or by any other

person in whose wrong hands the design may fall. Moreover, the designer is at a risk

since the success of the design registered prior to market exhibition and sale of the

same is not known to the designer. Hence, once the registered design hits the

consumer market, the designer may find that the design is not appreciated and has

not met the expected demand thus making the whole cumbersome procedure

undertaken by the designer for registration of that design as futile one.

64 Poojan Sahny (2012), “The Designs Act, 2000: A Fashion Faux Pas”, 1-12, available at,<http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2185519> (accessed on 28/12/2013), p. 4.

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Figure 2: Procedure for Registration of Design

Filing of Applications

Numbering & Dating ofApplications & Formalities Check

Substantive Examinations ofApplications

Communication ofObjection(s)

Removal ofObjection(s)

Re-examination

Non-complianceof Objection(s)

Abandoned

RefusalHearing if

Objection(s) iscontested

Compliance ofObjection(s)

Appeal toHigh Court

Waving/Removalof Objection(s)

Acceptance

In Case of Allowance ofAppeal

No Objection

Notification in the OfficialGazette

Issue of Certificate ofRegistration

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3. Inadequacy of Damages

Although the Designs Act incorporates provisions for recovery of damages from any

person involved in the act of piracy of registered design but puts a limit on the

amount of money that can be recovered (i.e. not exceeding fifty thousand rupees).

This ceiling on damages is a mockery of the grandeur associated with couture

creations which are worth lakhs of rupees.

From the above discussion, it is clear that these three shortcomings of the

Designs Act create hindrance in the effective protection of fashion designs under the

Act.

B. Copyright Protection for Fashion Design

Copyright protection is another legal protection model employed by the fashion

designers to protect their creative works. In India, the Indian Copyright Act, 195765

lays down the law relating to copyright. From the perspective of protection of design

in general and fashion design in particular, Section 15 of the Copyright Act is

relevant. It provides:

15. Special provision regarding copyright in designs registered orcapable of being registered under the Designs Act,2000.-(1) Copyrightshall not subsist under this Act in any design which is registered under theDesigns Act, 2000.

(2) Copyright in any design, which is capable of being registered under theDesigns Act, 2000, but which has not been so registered, shall cease as soon asany article to which the design has been applied has been reproduced morethan fifty times by an industrial process by the owner of the copyright or, withhis license, by any other person.

A careful perusal of the above provision clearly shows that Copyright Act and Designs

Act overlap each other on the issue of design protection. The Copyright Act,

particularly Section 15, when read conjointly with the Designs Act, lays down a basic

framework for design protection in India as under (also see, Figure 3):

65 The Copyright Act came into force on 21st January 1958. Full text of Act is available at,<http://copyright.gov.in/Documents/CopyrightRules1957.pdf>. Since its enactment in 1957, theCopyright Act has been amended six times, i.e., in 1983, 1984, 1992, 1994, 1999 and 2012. Recently, in2012, the Copyright Act was amended by the Copyright (Amendment) Act, 2012. The Amendment Actof 2012 came into force on 21st June 2012. Full text of the 2012 Amendment Act is available at,<http://copyright.gov.in/Documents/CRACT_AMNDMNT_2012.pdf>.

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1) Designs capable of being registered under the Designs Act, 200066 and

registered as per the provisions of the Act get protection under the Designs

Act only.

2) Designs capable of being registered under the Designs Act, 2000 but not so

registered get protection under the Copyright Act, 1957.

3) Designs not capable of being registered under the Designs Act, 2000, as they

are original artistic works,67 get protection under the Copyright Act. 1957.

Considering the fact that fashion design is a sort of design, the above described

framework for design protection is relevant and applicable to fashion design

protection also. It means that 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.68 In this

scenario, copyright in registered fashion design will subsist for a maximum period of

fifteen years.69 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, 1957.70 Copyright in fashion design, in this

context, will subsist up to fiftieth reproduction by an industrial process of the article

to which design has been applied.71 And at the end, a 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, 1957.72 Copyright in an original artistic work

automatically subsists as soon as the work comes into existence and it remains

66 A design is capable of being registered under the Designs Act, 2000 only if it fulfils the followingtwo conditions:

1) It is a “design” as per Section 2 (d) of the Designs Act, 2000 and2) It satisfies the conditions laid down under Section 4 of the Designs Act, 2000.

67 Section 2 (d) of the Designs Act, 2000, which defines “design”, specifically excludes “artistic works”,as defined by Section 2 (c) of the Copyright Act, 1957, from the definition of “design”. According toSection 2 (c) of the Copyright Act, 1957, “artistic work” means-

(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a(ii) photograph, whether or not any such work possesses artistic quality;(iii) work of architecture;7 and(iv) any other work of artistic craftsmanship.

68 See, Section 15(1) of the Copyright Act, 1957 and Section 11 (1) of the Designs Act, 2000.69 See, Section 11 (1) & 11 (2) of the Designs Act, 2000.70 See, Section 15 (2) of the Copyright Act, 1957.71 Ibid.72 See, Section 2 (d) of the Designs Act, 2000 and Section 13 of the Copyright Act, 1957.

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during the lifetime of the author plus sixty years, when published during the lifetime

of the author.73

It is evident, from the above discussion, that protection offered to fashion

design as an original artistic work is much stronger than the protection offered to it

as a design capable of being registered under the Designs Act, 2000. In other words,

a fashion design is better protected as an “artistic work” under the Copyright Act,

1957 than as a “design” under the Designs Act, 2000. And because of this reason,

fashion designers in India always tend to term their creative works i.e. fashion

designs as artistic works and to protect like the same. However, courts in India have

developed jurisprudence, through a series of their judgments, to determine when a

design is an “artistic work” and when it is a “design” in the sense of Designs Act,

2000. The decision rendered by the Division Bench of the Delhi High Court in the

case of Rajesh Masrani Vs. Tahiliani Design Pvt. Ltd.74 was the first and

foremost step in forming that jurisprudence.

In this case, the plaintiff (respondent in the appeal), M/s Tahiliani Design Pvt.

Ltd., was a private limited company under the creative leadership of Mr. Tarun

Tahiliani and it claimed to have a major presence in the fashion industry in India

enjoying global reputation with over 80 outlets in 20 countries. The plaintiff claimed

that the drawings which were made in the course of developing the garments and

accessories by the plaintiff were artistic works under Section 2(c) (i) of the Copyright

Act, 1957. It was further claimed by the plaintiff that the garments or accessories

themselves were works of artistic craftsmanship under Section 2(c) (iii) of the Act,

while the patterns printed or embroidered on the fabric were also artistic works in

their own right.

The plaintiff, alleged infringement of copyright by the defendant (appellant in

the appeal), Rajesh Masrani, on the ground that there was a colourable imitation or

substantial reproduction of the plaintiff's fabric prints including the underlying

drawings/sketches thereof, or of any other of the plaintiff's copyrighted works

including works of artistic craftsmanship or other literary or artistic works. The

plaintiff filed a suit seeking a decree of permanent injunction, damages and rendition

73 See, Section 22 of the Copyright Act, 1957.74 Appeal No.: FAO (OS) No.393/2008 (decided on 28/11/2008 by A.K. Sikri and Manmohan Singh,JJ.), available at, <http://lobis.nic.in/dhc/MAN/judgement/02-12-2008/MAN28112008FAOOS3932008.pdf> (accessed on 15/01/2014). Also reported in:AIR2009Delhi44; 2009BusLR280 (Del); LC2009 (1)252; 2009(39) PTC 21 (Del).

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of accounts against the defendant for infringement of the plaintiff’s alleged copyright

in the designs. An ex parte ad interim injunction order was passed in favour of

plaintiff. Later on, in his order, the learned Single Judge of the Delhi High Court

confirmed the ex parte ad interim injunction and allowed the application of the

plaintiff for restraining the defendant from reproducing, printing, publishing and

distributing, selling or offering for sale plaintiff’s copyrighted prints in any form

whatsoever and dismissed the application of defendant for vacation of ex-parte

injunction order. Against the order, the appeal was filed by the defendant.

The defendant/appellant raised four contentions: firstly, the

plaintiff/respondent had no right to claim protection under the Copyright Act, 1957

as the artistic work for which copyright was alleged to exist was actually 'design'

which came under the purview of the Designs Act, 2000 and since the same was not

registered under the Designs Act, the plaintiff was not entitled to protection under

the said Act; secondly, the textile design did not constitute 'artistic work' within the

meaning of Section 2(c)(i) of the Copyright Act and was, therefore, not capable of

protection; thirdly, as no copyright subsisted under Section 15 of the Copyright Act,

1957, the suit of the plaintiff was liable to be dismissed in view of the same and

fourthly, plaintiff had no right to claim protection under the Copyright Act, 1957

because he was also not the registered owner of the copyright.

However, the plaintiff/respondent responded that the protection of the

Copyright Act, 1957 was available to him because of the following reasons: firstly, the

patterns printed or embroidered on the fabric were original artistic works; secondly,

“artistic work” was distinct from “design” and remained “artistic work” per se distinct

from the “garment” (article) to which it was applied and, therefore, was covered

under the exclusion contained in Section 2(d) of the Designs Act, 2000; thirdly, the

plaintiff was the author/owner of the copyright in the creative work (i.e. print) done

by Mr. Tarun Tahiliani for and on behalf of the plaintiff, or by designers employed by

the plaintiff-company; fourthly, the prints, which were the subject matter of the suit,

were part of the couture line and not more than twenty or possibly fewer copies were

made of any single costume and fifthly, registration is not a prerequisite to get the

protection against infringement under the Copyright Act, 1957. It was further argued

by the plaintiff that since the subject matter of the suit (i.e. print) was original

artistic work and was covered within the definition of Section 2 of the Copyright Act,

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the case for infringement of copyright was made out against defendant within the

meaning of Sections 13 and 14 of the Copyright Act.

The Honourable Court, after analysing the relevant provisions of the Designs

Act, 2000 and the Copyright Act, 1957 and after examining the plaintiff’s mode of

creation and execution of the artwork on a finished garment, held that the plaintiffs'

work was entitled for protection under Section 2(c) of the Copyright Act and was an

original artistic work. Since the work was an 'artistic work' which was not covered

under Section 2(d) of the Designs Act, 2000, it was not capable of being registered

under the Designs Act and the provisions of Section 15(2) was not applicable.75 It was

further pointed out by the Court that maximum twenty copies were made of any

single costume/ garment on which plaintiff’s work (i.e. print) was applied. Therefore,

Section 15 (2) of the Copyright Act, 1957, which bars the subsistence of copyright in a

design capable of being registered under the Designs Act but not so registered upon

the reproduction of an article to which the design was applied more than fifty times,

was not applicable in the present case and copyright rightly vested with the plaintiff

with regard to his artistic work under the Copyright Act, 1957.76 The Court also did

not accept the plea of the plaintiff that to claim protection under Copyright Act,

registration was compulsory. The Court observed that it was settled law that

registration of the work was not compulsory and was not a condition precedent for

maintaining a suit for damages for infringement of Copyright.77 In view of the

foregoing and after making comparison of the works of both plaintiff and defendant,

the Court concluded that defendant committed infringement of copyright of plaintiff

and it was a flagrant case of piracy of copyrights.

Although a clear and elaborate distinction between “copyright in artistic work”

and “copyright in design” was not made in this judgment, nevertheless its

importance for fashion industry could not be negated. This case clearly lays out the

interface between the Designs Act, 2000 and the Copyright Act, 1957. Copyright

protection used to be forfeited by many designs because of Section 15 (2) of the

Copyright Act. But this decision demonstrates that in the cases of real fashion

75 Ibid., Paragraph 26.76 Ibid., Paragraph 14.77 Ibid., Paragraph 34.

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designers who make exclusive lines, where reproduction is limited, copyright law acts

as a powerful tool of protection.78

The jurisprudence which was developed in aforesaid case was further

elaborated, by the Division Bench of the Delhi High Court, in a detailed and lucid

manner in Microfibres Inc. Vs. Girdhar & Co. & Anr.79. This case was related

with the infringement of design of upholstery fabrics.

The Plaintiff (appellant in the appeal), Microfibres Inc., was a manufacturer

and seller of upholstery fabrics with designs derived from the original and unique

artistic works either conceptualized or drawn by its employees or by assignation of

the copyright in such artistic works to the appellant by the original artists. Plaintiff

considered those designs as artistic works and alleged violation of its copyright in the

artistic works applied to upholstery fabrics by the defendant. Allegation of an

attempt to pass off the goods of the defendants as that of the plaintiff was also

levelled.

The defendants (respondent in the appeal), Girdhar & Co. & Anr., contended

that the designs, in respect of which the plaintiff claimed proprietary right and

protection under the Copyright Act, 1957, did not constitute artistic work rather they

were designs in the sense of the Designs Act, 2000 and hence not capable of

protection within the meaning of Section 14(c) of the Copyright Act. In case novelty

existed in the same, the statutory protection in such designs could only be under the

provisions of the Designs Act, 2000 by obtaining necessary registration there under.

And that was not done in this case by the plaintiff. Moreover, the defendants argued

that copyright in designs would also not subsist in view of provisions of Section 15(2)

of the Copyright Act, 1957 as fabric or cloth to which said designs were applied had

been reproduced more than fifty times.

Accepting the pleas made by the defendant, the learned Single Judge of the

Delhi High Court held that plaintiff’s work was design capable of being registered

under the Designs Act, 2000 and not the artistic work. The exclusion of an “artistic

work” as defined in Section 2(c) of the Copyright Act from the definition of “design”

under Section 2(d) of the Designs Act was only meant to exclude the original artistic

78 Zakir Thomas (2009), “IP Case Law Developments”, Journal of Intellectual Property Rights, 9:247-257, p. 254.79 Appeal No.: RFA (OS) NO.25/2006 (decided on 28/05/2009 by Mukul Mudgal and Vipin Sanghi,JJ.). Also reported in: LC2009 (2)229; 2009(40) PTC519 (Del).

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works like paintings of M.F. Hussain.80 It was the original paintings, sculptors and

such works of art which were sought to be specifically excluded from the definition of

“design” under the Designs Act, 2000. The Court held that, thus, in the present case,

the Design Act which would give protection to the appellant and not the Copyright

Act. However, the plaintiff failed to register his works under the Designs Act hence

no protection would be available to him under the said Act.

Aggrieved by the Judgment of the learned Single Judge, the plaintiff preferred

an appeal. The Division Bench of the Delhi High Court, after making a detailed

analysis of Section 2(c) of the Copyright Act read with Section 2(d) of the Designs

Act and Section 15(2) of the Copyright Act and their interplay with each other, did

not find any merit in the appeal and dismissed the same. In this whole process, the

Court made certain observations which are of great significance not only to

understand the distinction between “artistic work” and “design” but also to discern

the scope of “copyright in artistic work” and “copyright in design”.81 The Court held:

80 See, paragraph 65 of the Judgment delivered on 13/01 /2006 by Sanjay Kishan Kaul, J. inMicrofibres Inc. Vs. Girdhar & Co. & Ors., available at, < http://indiankanoon.org/doc/1210059/>.Also reported in: 128 (2006) DLT 238, 2006 (32) PTC 157 (Del).81 These observations can be summarized as follows:On “artistic work” and “design”

1. It is the exclusive right of the holder of a Copyright in an original artistic work to reproducethe work in any material form. When the copyright holder of an original artistic workreproduces the same in another material form by employing an industrial process on anarticle, and the same results in a finished article which appeals to the eye as adjudged solelyby the eye, then the features of shape, configuration, pattern, ornament or composition oflines or colours applied to the article by the industrial process constitutes a “design”, withinthe meaning of this expression as defined under the Designs Act.

2. There is a clear distinction between an original artistic work, and the design derived from itfor industrial application on an article. This position is clarified by the use of the expression'only' before the words 'the features of shape, configuration, pattern, ornament orcomposition of lines or colours' in the definition of 'design' in the Designs Act. Therefore, theoriginal artistic work, which may have inspired the creation of a design, is not merely thefeature of shape, configuration, pattern, ornament or composition of lines or colours whichare created to apply to an article by an industrial process. The original artistic work issomething different from the design.

3. It is not necessary that in every case a design has to be preceded by an artistic work uponwhich it is founded. A craftsman may create a design without first creating a basic artisticwork. Whether or not a design is preceded by an original artistic work, a design would, in itsown right qualify to be termed as an artistic work within the meaning of Section 2(c) of theCopyright Act. However, the design may or may not enjoy a copyright protection under theCopyright Act, depending on whether it is an “original artistic work” or not.

On “copyright in design” and “copyright in artistic work”1. Under the Designs Act, a copyright has a different connotation from a copyright under the

Copyright Act. Under the Designs Act, copyright means the exclusive right to apply the designto any article in any class in which the design is registered.

2. The expression “copyright in any design” used in Section 15(2) means the copyright asunderstood under the Copyright Act, and not under the Designs Act. There can be no claim forCopyright under the Copyright Act in an artistic work which does not have the quality ofpossessing originality. The holder of a copy of an original artistic work cannot claim copyright

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. . . [I]n the original work of art, copyright would exist and the author/holderwould continue enjoying the longer protection granted under the Copyright Actin respect of the original artistic work [per se]. . . . A design created from such[original work of art] for the purpose of industrial application on an article so asto produce an article which has features of shape, or configuration or pattern orornament or composition of lines or colours and which appeals to the eye wouldalso be entitled design protection in terms of the provisions of the Designs Act.Therefore, if the design is registered under the Designs Act, the Design wouldlose its copyright protection under the Copyright Act but not the originalpainting. If it is a design registrable under the Designs Act but has not so beenregistered, the Design would continue to enjoy copyright protection under theAct so long as the threshold limit of its application on an article by an industrialprocess for more than 50 times is reached. But once that limit is crossed, itwould lose its copyright protection under the Copyright Act. This interpretation. . . would harmonize the Copyright and the Designs Act in accordance with thelegislative intent.82

protection. Therefore, to be entitled to protection under the Copyright Act, the design shouldhave originality.

On Section 15 of the Copyright Act, 19571. Section 15 of the Copyright Act deals with the extent of, and the conditions for the copyright

protection to an artistic work, as an artistic work under the Copyright Act, which is a designregistered or capable of registration under the Designs Act.

2. As per Section 15 (1), once the design is created and got registered under the Designs Act,whether or not the design is eventually applied to an article by an industrial process, thedesign loses its protection as an artistic work under the Copyright Act.

3. If the design derived from the original artistic work is exploited beyond the specified limit (i.e.if the design is applied more than 50 times by an industrial process on an article) thecopyright in the design ceases as per Section 15 (2) of the Copyright Act unless it is registeredunder the Designs Act.

4. The operation of Section 15(2) of the Copyright Act does not exclude from the ambit ofCopyright protection either the original 'artistic work' upon which the design is based or thedesign which by itself is an artistic work. What stands extinguished under Section 15 of theCopyright Act is the copyright in the design itself as applied to an article and not the copyrightin the artistic work itself. The original artistic work, as contrasted with the applied artisticwork that is the design, would continue to fall within the meaning of the artistic work definedunder Section 2(c) of the Copyright Act, 1957 and would be entitled to the full period ofcopyright protection. The commercial/industrial manifestation of original artistic work suchas the design derived from and founded upon the original artistic work for the purpose ofindustrial production of furnishings would only be covered by the limitations placed inSection 15 of the Copyright Act.

5. The object of the two legislations was to prevent long term usage by the person who wascommercially exploiting something and yet wanting to claim an exclusive monopoly throughlonger period of copyright protection afforded to an artistic work. Section 15 of the CopyrightAct demonstrates the legislative intention of integrating the Copyright and Designs Acts.Commerce and art have been treated differently by the Legislature and any activity which iscommercial in nature has been granted lesser period of protection. On the other hand, pureartistic works per se have been granted a longer protection. This is precisely why thelegislature not only limited the protection by mandating that the copyright shall cease underthe Copyright Act in a registered design, but in addition, also deprived copyright protection todesigns capable of being registered under the Designs Act, but not so registered, as soon asthe concerned design had been applied more than 50 times by industrial process by the ownerof the copyright or his licensee.

82 Paragraph 45 of the Division Bench’s Judgment. This paragraph was referred and relied upon by theDivision Bench of the Delhi High Court, albeit in different factual circumstances, in Kiran ShoesManufacturers Vs. Registrar of Copyrights and Another [Appeal No. : RFA 750 OF 2010(decided on 24.2.2012 by A.K. Sikri And Rajiv Sahai Endlaw, JJ.). Also reported in: 2013 (54) PTC

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In the backdrop of the judgements discussed above, it can be concluded that 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

1) 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.

The above proposition apparently looks very attractive to fashion designers as it

extends copyright protection for their creations. However, the scope of this

protection is limited and not worthwhile for large number of fashion designers as it

enables the designers to protect only their couture lines wherein only limited pieces

of an exclusive garment are created.83 Garments which are parts of ready to wear and

mass market collections can-not be rendered protection under the Copyright Act,

1957 because they are produced in large quantities (at least more than fifty).

C. Trademark Protection for Fashion Design

Trademarks help to maintain a prestige premium for particular brands and can be

quite valuable to apparel and accessory firms. The utility of trademark law, however,

in protecting fashion designs, as distinct from fashion brands, is quite limited.84 A

trademark is useful for a fashion design only in that situation when 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. And in these circumstances, the logo becomes part of the design, and thus

trademark provides significant protection against design copying.

In India, the Designs Act of 2000 under Section 2(d) while defining “design”

expressly excludes the trademark within the meaning of Section 2(1) (v) of Trade and

Merchandise Marks Act, 1958 which after the repeal shall be corresponding

386 (Del.) (DB)] (see paragraph 11). In this case “side trim device” applied on sport shoes was held tobe a design by the Honourable Court.83 Poojan Sahny (2012), note 64, p.11.84 Kal Raustiala and Christopher Sprigman (2006), note 19, p. 1701.

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definition of Trade Marks Act, 1999. All this would mean that there is an express

exclusion under the Designs Act anything which is capable of being trademark.

Therefore, a proprietor by electing to go for registering a design explicitly forecloses

his right to claim the said article as trademark which is evident from the definition of

“design” under Section 2 (d) of the Designs Act. It means that a fashion design which

is trademark cannot get protection under the Designs Act and similarly if a fashion

design is registered under the Designs Act the same cannot be protected under the

Trade Marks Act, 1999.

However, it is pertinent here to mention the judgement rendered by the Delhi

High Court in Micolube India Ltd. Vs. Rakesh Kumar trading as Saurabh

Industries & Ors.85 Answering affirmatively to a question whether a remedy by

way of passing off action would be available qua a registered design used as a

trademark by the plaintiff, the Hon’ble full bench by 2:1 majority held that the the

plaintiff would be entitled to institute an action of passing off in respect of a design

used by him as a trade mark provided the action contains the necessary ingredients

to maintain such a proceeding. The Court observed that:

[H]aving regard to the definition of a design under Section 2(d) of the DesignsAct, it may not be possible to register simultaneously the same mater as adesign and a trade mark. However, post registration under Section 11 of theDesigns Act, there can be no limitation on its use as a trademark by theregistrant of the design. The reason being: the use of a registered design as atrademark is not provided as a ground for its cancellation under Section 19 ofthe Designs Act.86

After making these observations, the Court held that a suit for infringement of a

registered design and a passing off action could be instituted simultaneously however

a composite suit for infringement of a registered design and a passing off action

would not lie.87 Moreover, the Court accentuated that a suit for passing off action

could be instituted before the expiry of the statutory period provided under Section

11 of the Designs Act.88

This judgement has expanded the ambit of trademark protection for design.

Consequently, a fashion design registered under the Designs Act not only gets

85 Case No.: CS (OS) No. 1446 of 2011 (decided on 15/05/2013, majority opinion was given by RajivShakdher and Sanjay Kishan Kaul, JJ., whereas dissenting opinion was rendered by ManmohanSingh, J.). Also reported in: 199 (2013) DLT 740.86 Ibid., paragraph 22.8.87 Ibid., paragraph 34 (iii).88 Ibid., paragraph 34 (ii).

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protection under the Act but can also be protected by instituting an action for passing

off provided that design was being used as trademark post-registration. To conclude,

this judgement has unlocked a new vista for design protection.

VI. Summing Up

The global fashion industry is growing by leaps and bounds. It has become a

significant part of the global economy and should therefore receive intellectual

property rights protection for its growth. At the heart of growing fashion industry are

fresh and new designs. However, growth of this industry is marred by fashion design

piracy. The Indian fashion design industry is encountering with the same problem.

And on the basis of analysis made in the preceding section of this paper it can be

rightly concluded that current intellectual property regime in India is not sufficient

and efficient enough to protect Indian fashion design industry. There is a need to

improvise the current intellectual property regime in India so as to make it more

favourable to protect fashion design from piracy. First and foremost, a separate

definition of “fashion design” should be included in the Designs Act, 2000. And this

definition should facilitate the entire appearance and over all look of a particular

piece of apparel or garment as against the present definition under Section 2 (d) of

the Act which protects each aspect of a garment individually. Secondly, a simplified

procedure for design registration should be made under the Designs Act, 2000 as

present procedure is a tedious one and does not suit the needs of dynamic fashion

design industry. And thirdly, the provision for protection of unregistered design

should also be included in the Designs Act, 2000. The protection for even short

period of time will serve the needs of fashion design industry in this situation.

Incorporation of all these suggestions would certainly make the current Indian

intellectual property regime more effective and efficient enough to deal with the

menace of fashion design piracy. This would encourage fashion designer to innovate

new designs which would ultimately lead to the growth of the fashion industry.

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Figure 3: A Synoptic View of the Protection of Designs in India

Protection Available to Designs inIndia

Designs capable of beingregistered under the Designs Act,

2000

If Registered

Protection Under the DesignsAct, 2000

[as per Section 15 (1) of the CopyrightAct and Section 11 of the Designs Act]

Nature and scope ofProtection:

Copyright in registered design;Exclusive right to apply design to

any article in any class in which thedesign is registered.

Term of Protection:10 years from the date of

registration. Extendable for asecond period of 5 years.

If Not Registered

ProtectionUnder the Copyright Act, 1957

[as per Section 15 (2) of the CopyrightAct]

Nature and sccope ofProtection:

Copyright in design; Exclusiveright to apply design to any article.

Term of Protection:Upto 50th reproduction by an

industrial process of the article towhich design has been applied.

Designs not capable of beingregistered under the Designs Act,2000 but are original artistic works

Protection Under the Copyright Act,1957

[as per Section 13 of the Copyright Act]

Nature and scope ofProtection:

Copyright in original artisticworks; exclusive right to do or

authorise the doing of any of theacts mentioned in Section 14 (c)

of the Copyright Act .

Term of Protection:Lifetime of the author plus 60

years.

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