the power of industrial designs in the textile & apparels sector jyotsna balakrishnan anand...

THE POWER OF THE POWER OF INDUSTRIAL DESIGNSINDUSTRIAL DESIGNS

IN THE TEXTILE & APPARELS IN THE TEXTILE & APPARELS SECTORSECTOR

Jyotsna BalakrishnanJyotsna BalakrishnanAnand & Anand, New DelhiAnand & Anand, New Delhi

June 2005June 2005

e-mail@anandandanand.come-mail@anandandanand.com

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

POSSIBLE REASONS WHY IPRs POSSIBLE REASONS WHY IPRs ARE THOUGHT TO BE NOT ARE THOUGHT TO BE NOT APPLICABLE TO THE FASHION APPLICABLE TO THE FASHION INDUSTRY?INDUSTRY?

• The nature of fashion design necessarily attracts imitation – “fashion following”

• The transitory/seasonal nature of the fashion industry & markets

• The fear that protection may paralyse the fashion industry by creating monopolies

Why is it important for the Why is it important for the fashion community to think fashion community to think

of design protection?of design protection?• Design protection is as applicable to the

fashion industry as in any other business segment

• In the fashion industry, it is the appearance

of the product that is one of the most crucial determining factors in consumer choice

• A unique & innovative design can thus be the USP and the linchpin for your business

IPRs & the fashion IPRs & the fashion industryindustry

• If China’s strength lies in volumes, India’s lies in value additionvalue addition

• The recognition of the role of the The recognition of the role of the DESIGNERDESIGNER & the immense value of the & the immense value of the INTANGIBLEINTANGIBLE that they create that they create

• International experience shows that International experience shows that protection stimulates rather than stunt protection stimulates rather than stunt the fashion industry – eg., Francethe fashion industry – eg., France

IPRs & the fashion IPRs & the fashion industryindustry

• Design rights & IPRs in general, recognise & harness individual creativity & help PROFITPROFIT from it

• Understanding the boundaries of design protection also helps in not infringing other’s rights

““DESIGNS”DESIGNS”

Functional /utilitarian

Patents Act, 1970

Purely artistic works

Copyright Act, 1957

Designs with eye-appeal & capable of

Industrial application

Designs Act, 2000

A “DESIGN” UNDER THE A “DESIGN” UNDER THE DESIGNS ACT, 2000DESIGNS ACT, 2000• 2D or 3D 2D or 3D featuresfeatures of shape, configuration, pattern,

ornament, composition of lines, colours

• Applied to any article by any industrial process or industrial process or meansmeans

• The finished article appeals to the eyeappeals to the eye

• Does not include anything which is in substance a mere Does not include anything which is in substance a mere mechanical devicemechanical device

• Not an artistic work or trademark

DESIGNS CAN BE 2D OR DESIGNS CAN BE 2D OR 3D OR COMBINATION OF 3D OR COMBINATION OF

BOTH BOTH

• Surface pattern Surface pattern (2D)(2D)

• Cut of the Cut of the garment (3D)garment (3D)

DESIGNS EXCLUDED DESIGNS EXCLUDED FROM PROTECTIONFROM PROTECTION

• Not NEW or ORIGINAL

• If the design has been disclosed to the public in India or elsewhere (exception is provided for exhibitions)

• Not significantly distinguishable from known designs or a combination of known designs

““NEW OR ORIGINAL”NEW OR ORIGINAL”

• “Original”: Means that it must originate from the creator

• “New”: May involve a design which is known but is applied for the first time to that article

• But over the years, the test has become NEW NEW ANDAND ORIGINAL ORIGINAL

THE DEGREE OF NOVELTY REQUIRED

• “New or original” does not simply mean different

• A trade variant of an old design does not make it novel

• Substantial novelty required

““TRADE VARIANTS”TRADE VARIANTS”

• Le May v. Welch: “It cannot be said that there is a new design every time a coat or waistcoat is made with a different slope or different number of buttons…to hold that would be to paralyse industry.”

• Thus, trifling variations/immaterial details would not be considered “NEW”

WHAT IS “NOVELTY”WHAT IS “NOVELTY”

• Strikingly different appearance

• Pattern made up of old features but resulting combination with strikingly different appearance can be novel

Example of “Novelty”

• Wallpaper Manufacturers Limited case

• Wallpaper pattern held to be a new and original combination of known designs

Requirement of “non-Requirement of “non-disclosure”disclosure”

• Prior to application, one should be careful not to launch the design into the market

• The Design, prior to the filing of the application should be treated as confidential information

WHAT IF YOUR DESIGN IS ALSO FUNCTIONAL?

• The intent of the Designs Act is to protect shapes & not functions

• But, there may be a design which also has functional features

• Test is to see if design is solely dictated by function. If yes, it will not be registrable

WHY REGISTER YOUR DESIGN? – DESIGNS ACT,

2000• Statutory right – accrues only on registration - territorial

• Right to prevent all other from producing, importing, selling or distributing products having an identical appearance or a fraudulent or obvious imitation

• Monopoly Period of 10 years extendable by 510 years extendable by 5

• Gives you a Unique Selling Point (USP)

• Is an asset & can be licensed

CLASSIFICATION ACCORDING TO GOODS

• Registration is in relation to goods

• Locarno classification which is followed throughout the world

• 32 classes

• Protection confined to class for which registered

• More than one design may be registered as a set of articles of same character

WHO CAN APPLY FOR A WHO CAN APPLY FOR A DESIGN REGISTRATION?DESIGN REGISTRATION?• If design has been specially If design has been specially

commissioned for good commissioned for good consideration, the person for whom consideration, the person for whom it is executedit is executed

• An assignee or exclusive licenseeAn assignee or exclusive licensee

• In any other case, the In any other case, the AUTHOR AUTHOR

Importance of getting clarity on ownership of the

“DESIGN”• In the context of joint design efforts,

who owns the design should be spelt out in the contract

• Also, where a part of the design process is sourced out, it should be spelt out

• While designing for someone else, be clear in the contract on who owns the design

THE OVERLAP BETWEEN COPYRIGHT THE OVERLAP BETWEEN COPYRIGHT & DESIGN LAWS& DESIGN LAWS

• Purely artistic works, for example, paintings and sketches are protected under the Copyright Act

• The design development process involves the development of a number of artistic works – can copyright protection be claimed over them?

THE DESIGN DEVELOPMENT PROCESSTHE DESIGN DEVELOPMENT PROCESS

• For example, TEXTILESTEXTILES:

Sketches Engineered templates

Film tracing Screens

Engraving/printing Fabrication

• Each on of the above can qualify as “artistic “artistic works”works” under the Copyright Act, 1957

COPYRIGHT & DESIGN COPYRIGHT & DESIGN LAWSLAWS

• A distinction has thus sought to be drawn between “purely artistic works” and works which are commercialised by industrial application

• The rationale is that when artistic works are commercialised, they do not deserve the protection granted under the Copyright Act and come within purview of the Designs Act

“Artistic work” – Overlap of Rights?

• Copyright does not subsist in design registered under the Designs Act

• Design capable of being registered, but which has not been so registered - copyright shall cease as soon as any article to which the design has been applied more than fifty times by an industrial process

Copyright & Designs Copyright & Designs LawLaw

• However, it may not be practically possible for a designer to get all his designs registered. Also, all designs may not be “capable of registration” under the Designs Act

• It may be argued that a design may be capable of protection under Copyright Act on the basis of the underlying artistic works (i.e., the sketches, engravings, prototypes, etc.) though Section 15 (2) remains a bar

Copyright & Designs Copyright & Designs LawLaw

• It is therefore important to maintain documentation and records at every stage of product design and development as this may help in claiming protection for a design under the Copyright Act, 1957

DESIGN DESIGN Vs.Vs. COPYRIGHT COPYRIGHTDESIGNDESIGN COPYRIGHTCOPYRIGHT

Complete monopoly Only protects against copying

Need to register to claim protection

Subsists inherently

Has to be “NEW” No requirement for novelty

Maximum 15 years Life of author + 50 years

Only in respect of goods registered for

Is not goods specific

DESIGN AS A TRADEMARK

• The “Epi” style The “Epi” style leather design of leather design of Louis Vuitton Louis Vuitton Malletier Malletier

• Protected as a Protected as a trademark against trademark against piracy by the Delhi piracy by the Delhi High CourtHigh Court

Licensing of a DesignLicensing of a Design

• The design can be licensed to third parties to exploit markets or commercialise it on a scale much bigger than what can the resources of the author

• Essential to specify in the license- the term, territory, amount of royalty & type of products for which design can be used by licensee

PIRACY OF REGISTERED PIRACY OF REGISTERED DESIGNDESIGN

• Anyone who applies or causes to be applied to any article the design or any fraudulent or obvious imitation of it

• To see whether the essential design features are substantially similar between the article and the design representation

• It is the overall general impression of similarity which is taken into account

Example of infringement of registered design

• Birkin v. Pratt

• Lace pattern was held to have been infringed

YSL v. Ralph Lauren

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

The Suneet Verma The Suneet Verma controversy – Lessons to be controversy – Lessons to be

learntlearnt• Need to assert rights

over your designs – think that you are creating Intellectual Property from Day 1 of product design & development and not just when your design gets copied

The Suneet Verma The Suneet Verma controversy – Lessons to be controversy – Lessons to be

learntlearnto At the same time,

if you need to use a design, do due diligence over its ownership – give credit – take a license if you do need to use it

CONCLUDING CONCLUDING OBSERVATIONSOBSERVATIONS

o The Design right needs to be used to support and leverage the enormous amount of creativity and potential of Indian designers – time has come to actively harness it – don’t just wake up when your design gets copied, start thinking about it from Day 1 of product creation and development

o A unique design for which you see commercial value and which you intend to commericalise, get it registered as a design

CONCLUDING CONCLUDING OBSERVATIONSOBSERVATIONS

• Till the time you file a design application, treat it as confidential when you need to disclose it to wholesalers/exporters/in a portfolio

• Have clarity on the ownership of the designs that you create by entering into contracts that spell out who owns the designs

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

CONCLUDING CONCLUDING OBSERVATIONSOBSERVATIONS

• When using designs, do your due diligence on the ownership of these designs – give credit, take licenses

• Commericalise your design through license arrangements

CONCLUDING CONCLUDING OBSERVATIONSOBSERVATIONS

o The fashion design community should lobby and build pressure on legislators and the government to provide for an “unregistered “unregistered design right”design right” as exists in the European Union