Transcript THE POWER OF INDUSTRIAL DESIGNS IN THE TEXTILE & APPARELS SECTOR Jyotsna Balakrishnan Anand & Anand, New Delhi June 2005 [email protected].

THE POWER OF
INDUSTRIAL DESIGNS
IN THE TEXTILE & APPARELS SECTOR
Jyotsna Balakrishnan
Anand & Anand, New Delhi
June 2005
[email protected]
DESIGN RIGHTS HAVE AN
IMPORTANT
ROLE
TO
PLAY IN THE FASHION
INDUSTRY
POSSIBLE REASONS WHY IPRs ARE
THOUGHT TO BE NOT APPLICABLE
TO THE FASHION INDUSTRY?
• The nature of fashion design necessarily
attracts imitation – “fashion following”
• The transitory/seasonal nature of the fashion
industry & markets
• The fear that protection may paralyse the
fashion industry by creating monopolies
Why is it important for the
fashion community to think of
design protection?
• Design protection is as applicable to the
fashion industry as in any other business
segment
• In the fashion industry, it is the appearance
of the product that is one of the most
crucial determining factors in consumer
choice
• A unique & innovative design can thus be the
USP and the linchpin for your business
IPRs & the fashion industry
• If China’s strength lies in volumes, India’s lies
in value addition
• The recognition of the role of the DESIGNER
& the immense value of the INTANGIBLE
that they create
• International
experience
shows
that
protection stimulates rather than stunt the
fashion industry – eg., France
IPRs & the fashion industry
• Design rights & IPRs in general,
recognise
& harness individual
creativity & help PROFIT from it
• Understanding the boundaries of design
protection also helps in not infringing
other’s rights
“DESIGNS”
Functional /
utilitarian
Patents
Act, 1970
Purely
artistic works
Copyright
Act, 1957
Designs with
eye-appeal & capable of
Industrial application
Designs
Act, 2000
A “DESIGN” UNDER
DESIGNS ACT, 2000
THE
• 2D or 3D features of shape, configuration, pattern,
ornament, composition of lines, colours
• Applied to any article by any industrial process or means
• The finished article appeals to the eye
• Does not include anything which is in substance a mere
mechanical device
• Not an artistic work or trademark
DESIGNS CAN BE 2D OR 3D
OR COMBINATION OF BOTH
• Surface pattern (2D)
• Cut of the garment
(3D)
DESIGNS EXCLUDED FROM
PROTECTION
• Not NEW or ORIGINAL
• If the design has been disclosed to the public in
India or elsewhere (exception is provided for
exhibitions)
• Not significantly distinguishable from known
designs or a combination of known designs
“NEW OR ORIGINAL”
• “Original”: Means that it must originate from
the creator
• “New”: May involve a design which is known
but is applied for the first time to that article
• But over the years, the test has become
NEW AND ORIGINAL
THE DEGREE OF NOVELTY REQUIRED
• “New or original” does not simply mean
different
• A trade variant of an old design does
not make it novel
• Substantial novelty required
“TRADE VARIANTS”
• Le May v. Welch: “It cannot be said that
there is a new design every time a coat or
waistcoat is made with a different slope or
different number of buttons…to hold that
would be to paralyse industry.”
• Thus, trifling variations/immaterial details
would not be considered “NEW”
WHAT IS “NOVELTY”
• Strikingly different appearance
• Pattern made up of old features but resulting
combination with strikingly different
appearance can be novel
Example of “Novelty”
• Wallpaper
Manufacturers
Limited case
• Wallpaper pattern held
to be a new and
original combination
of known designs
Requirement of “non-disclosure”
• Prior to application, one should be
careful not to launch the design into the
market
• The Design, prior to the filing of the
application should be treated as
confidential information
WHAT IF YOUR DESIGN IS
ALSO FUNCTIONAL?
• The intent of the Designs Act is to protect
shapes & not functions
• But, there may be a design which also has
functional features
• Test is to see if design is solely dictated by
function. If yes, it will not be registrable
WHY REGISTER YOUR DESIGN? –
DESIGNS ACT, 2000
• Statutory right – accrues only on registration territorial
• Right to prevent all other from producing, importing,
selling or distributing products having an identical
appearance or a fraudulent or obvious imitation
• Monopoly Period of 10 years extendable by 5
• Gives you a Unique Selling Point (USP)
• Is an asset & can be licensed
CLASSIFICATION ACCORDING TO GOODS
• Registration is in relation to goods
• Locarno classification
throughout the world
which
is
followed
• 32 classes
• Protection
registered
confined
to
class
for
which
• More than one design may be registered as a
set of articles of same character
WHO CAN APPLY FOR A
DESIGN REGISTRATION?
• If
design
has
been
specially
commissioned for good consideration,
the person for whom it is executed
• An assignee or exclusive licensee
• In any other case, the AUTHOR
Importance of getting clarity
on ownership of the “DESIGN”
• In the context of joint design efforts, who
owns the design should be spelt out in the
contract
• Also, where a part of the design process is
sourced out, it should be spelt out
• While designing for someone else, be clear in
the contract on who owns the design
THE OVERLAP BETWEEN COPYRIGHT &
DESIGN LAWS
• Purely artistic works, for example,
paintings and sketches are protected under
the Copyright Act
• The design development process involves
the development of a number of artistic
works – can copyright protection be
claimed over them?
THE DESIGN DEVELOPMENT PROCESS
• For example, TEXTILES:
Sketches
Engineered templates
Film tracing
Screens
Engraving/printing
Fabrication
• Each on of the above can qualify as “artistic
works” under the Copyright Act, 1957
COPYRIGHT & DESIGN LAWS
• A distinction has thus sought to be drawn
between “purely artistic works” and works
which are commercialised by industrial
application
• The rationale is that when artistic works are
commercialised, they do not deserve the
protection granted under the Copyright Act
and come within purview of the Designs Act
“Artistic work” – Overlap of Rights?
• Copyright does not subsist
in design registered under
the Designs Act
• Design capable of being
registered, but which has
not been so registered copyright shall cease as
soon as any article to
which the design has
been applied more than
fifty
times
by
an
industrial process
Copyright & Designs Law
• However, it may not be practically possible for a
designer to get all his designs registered. Also, all
designs may not be “capable of registration” under
the Designs Act
• It may be argued that a design may be capable of
protection under Copyright Act on the basis of the
underlying artistic works (i.e., the sketches,
engravings, prototypes, etc.) though Section 15 (2)
remains a bar
Copyright & Designs Law
• It is therefore important to maintain
documentation and records at every
stage
of
product
design
and
development as this may help in
claiming protection for a design under
the Copyright Act, 1957
DESIGN Vs. COPYRIGHT
DESIGN
COPYRIGHT
Complete monopoly
Only protects against
copying
Subsists inherently
Need to register to
claim protection
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
leather design of
Louis
Vuitton
Malletier
• Protected
as
a
trademark
against
piracy by the Delhi
High Court
Licensing of a Design
• The design can be licensed to third parties
to exploit markets or commercialise it on a
scale much bigger than what can the
resources of the author
• Essential to specify in the license- the term,
territory, amount of royalty & type of
products for which design can be used by
licensee
PIRACY OF REGISTERED DESIGN
• Anyone who applies or causes to be applied
to any article the design or any fraudulent or
obvious imitation of it
• To see whether the essential design features
are substantially similar between the article
and the design representation
• It is the overall general impression of
similarity which is taken into account
Example of infringement of
registered design
• Birkin v. Pratt
• Lace pattern was
held to have been
infringed
YSL v. Ralph Lauren
• YSL was awarded
damages for Ralph
Lauren’s
infringement of the
design rights in YSL’s
design of its tuxedo
dress
The Suneet Verma controversy –
Lessons to be learnt
• Need to assert rights
over your designs –
think that you are
creating
Intellectual
Property from Day 1
of product design &
development and not
just when your design
gets copied
The Suneet Verma controversy –
Lessons to be learnt
o 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 OBSERVATIONS
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 OBSERVATIONS
• Till the time you file a design application, treat it as
confidential when you need to disclose it to
wholesalers/exporters/in a portfolio
• Have clarity on the ownership of the designs that
you create by entering into contracts that spell out
who owns the designs
o Maintain documentation and records at every stage
of product development – helps you claim copyright
even if your design is unregistered
CONCLUDING OBSERVATIONS
• When using designs, do your due
diligence on the ownership of these
designs – give credit, take licenses
• Commericalise your design through
license arrangements
CONCLUDING OBSERVATIONS
o The fashion design community should
lobby and build pressure on legislators
and the government to provide for an
“unregistered design right” as exists
in the European Union