LEGAL PROTECTION OF FASHION IN INDIA

ABSTRACT:
The Fashion Industry is a 1.4 trillion dollar industry worldwide. It is an industry which keeps ever-evolving
by producing brand new creations, innovations and becoming state of the art. The Fashion industry is
expanding at a fast pace and has grown out of apparels to also include luxury goods. In the contemporary
world, small businesses are striving to build their brands by infusing knowledge and expertise in their
product. As consumers grow both in number and in their economic status their fashion style keeps on varying
and to satisfy this ever increasing demand, the industry needs not just a lot of fashion designers but also
mechanisms to protect their rights on their IP such as protection of the designs of each article, protection of
the brand name of the designers which distinguishes it from others in the market and many more. Fashion
industry needs protection from counterfeiters to not only curb plagiarism but also to scale up the businesses
making Intellectual Property a core asset to the Fashion Industry.
This paper talks about the categories of Intellectual Property used to protect the creativity and designs of
couturiers. It also discusses the legal way of practicing Intellectual Property rights with reference to all the
sections mentioned under Indian Statutes. The paper covers the fundamentals to keep in mind for intellectual
property through jurisprudence. We then move on to talk about all the barriers which makes it difficult for
fashion designers to protect their designs, work and their intellectual capital followed by the importance of
protecting the intellectual property in apparel industry. We conclude by arguing ways to remove these
barriers and protect fashion designers Intellectual property and their work.

INTRODUCTION:
Intellectual Property is a personal right which comes into existence once something new and original is
created and registered by the rights holder. Intellectual property includes the design which is protected for
each article of clothing, protects the designers name and its brand through Trademarks, Patents in case there
is a novel and new invention made in the manufacturing process and Copyright as the fashion comes within
the purview of artistic creation. Some of these rights occur automatically i.e. Copyright whereas others need
to be registered. Fashion Technology has grown tremendously which has further enabled the counterfeiters to
produce counterfeit products at cheaper rates and using internet they have gained a wider audience through
deception thus robbing the original designer of proceeds from sale of the these counterfeit designs. Fashion
industry is different from other industries because in fashion industry as seasons change people want new
styles and designs in their wardrobes thus fuelling creation and selling of new designs all round the year. The
apparel industry has to introduce new variety every now and then instead of improving it around for years. It
is kind of part and parcel of the business environment making this commercial venture highly prone to
infringement. As it is often said “Ignorantia juris non excusat” which states that if designers are ignorant of
the existing laws to protect them, then there is no defence. It is advisable to all the owners in this industry to
be educated about the changes in IP protection and make most of it to protect their own rights.

i. IPRs IN FASHION INDUSTRY:

I. INDUSTRIAL DESIGNS:
Industrial Designs are protected in accordance with the provisions of Designs Act, 2000. As stated in the act
Design means any shape, pattern, combination of colours and lines in a new or original garment and can be
registered1. Industrial designs mainly consist of two dimensional features such as patterns, lines, colours and
three dimensional features such as shape of the article. The validity of the copyright in design can be enjoyed
by the registered proprietor for ten years from the date of application 2. It can be extended further for five
more years by providing prescribed fee. Many prominent fashion designers opt for design registration to
protect their classic design pieces. For instance, the iconic “Chanel Suit” designed by “Coco Chanel” is quiet
popular even today. Some designs pass on in no time but some stay forever like the “Kelly Bag” made by a
Hermes which is still regarded as a fashion statement after it got popular by “Grace Kelly” in 1956.
Registration of industrial designs on time is more appropriate and powerful as it helps in protecting the
fashion icons from imitators. After the successful registration one can protect their designs from being used
by third parties without consent. Many times manufacturers do not invest in protecting their intellectual
property with reasons such as short useful life of the fashion style and the major financial burden incurred in
the IP process. Taking this into consideration many countries such as United Kingdom and European Union
has introduced unregistered form of registration. This registration has a validity of maximum three years
which begins from the date when the designs were first published. This benefits the designers who have
budgets constraints and wish to test the market first. Mentioned below are few landmark fashion law cases
which explored the unexplored ambits of fashion law.
 Eicher Goodearth Private Limited vs. Krishna Mehta and Ors.
Under this case, Plaintiff filed for Permanent Injunction. It was argued by the plaintiff that defendant was the
former employee in their company, worked as brand consultant and was well versed with the company’s
registered designs and motifs. Defendant had copied them and used them to promote his own business which
has led to confusion among the consumers.
It was held by the court that, defendant had the intention to get fame and success through the plaintiff’s
company and such unfair competition was punished with Permanent Injunction.
 Crocs Inc. vs. Bata India Ltd. & Others3
Crocs Inc. filed a suit against Bata India Ltd, Liberty Shoes Ltd, and Action Shoes pvt. Ltd, Aqualite India
Ltd, Bioworld Merchandising India Ltd, Relaxo Footwear Ltd and Kidz Palace claiming that they have
pirated the registered design of clogs. Whereas, Defendants argued that the disputed design was not new and
original to Crocs for which it is claiming exclusive entitlement. It was already in Public Domain before the
registration.
The Court reiterated the meaning of new and original Design as per the Design Act, 2000 and held the
registration of clog shoes by Crocs as faulty because the design was already present in the public domain
before it got registered in the name of Crocs.
PROCEDURE:
Here we look into the steps involved in the procedure of Design filing in India. Procedure of Design
registration is contained under chapter 2 and from section 3 to section 10 of The Designs Act, 2000.
1. CONDITIONS TO BE FULFILLED:

1
The Designs Act, 2000, § 2(d), No. 16, Acts of Parliament, 2000 (India)
2
The Designs Act, 2000, § 11, No. 16, Acts of Parliament, 2000 (India)
3
John Sarkar, Crocs SuesBata, Others for Design Infringement, The Times of India, (Dec 23, 2014, 12:24 PM),
https://timesofindia.indiatimes.com
The design should be new and original, should not be published to the public before applying for registration
and the subject matter should not be obscene or scandalous in any matter4.The design should not be in
conflict with public morality and order5.
2. SELF- SEARCH:
The applicant has to look for other similar designs over the public database and make sure that the design is
unique and does not match with other registered ones.
3. FILING OF APPLICATION:
The person claiming to be the owner will file for the application in a prescribed manner with the prescribed
fees in any of the four Patent offices located at Kolkata, Mumbai, Chennai and Delhi. The date of application
filling will be deemed to be the date of registration.6
4. NUMBERING OF APPLICATIONS:
Once the application is filed with all the mandatory documents and prescribed fees, the applicant is given a
filing number and filing date.
5. EXAMINATION:
Before granting the registration, the application is sent for examination to the examiner and the report of the
same comes within two months.
6. OBJECTIONS IF ANY:
If there are any formal objections presented against the application, the applicant will be given time to
resolve those objections and to file a response in written for the same. The registrar will call for hearing if he
is not satisfied with the applicant’s response. If the registrar is not satisfied even then, the design will not be
considered for registration.
7. PUBLICATION:
If there are no formal objections for the application the registration for design will be granted. The controller
thereafter will publish the particulars of the design in prescribed manner in the office journal and will be
open for public inspection7.
8. ISSUANCE OF CERTIFICATE:
After completing all the stages successfully the controller will issue a certificate to the proprietor 8.This
certificate will be granted for next 10 years and can be renewed afterwards.

II. TRADEMARKS:
Trademarks are protected in accordance with the provisions of the Trade Marks Act 1999. Trademark as
defined in the act means the mark which is able to differentiate the goods and services of one person to that
of another9. Trademark is regarded as the face of big fashion houses. Trademark has the biggest impact
because it is through trademark that consumers can easily identify and recognise the origins of a particular
product. The validity of trademark registration can be enjoyed for ten years and can be renewed for another

4
The Designs Act, 2000, § 4, No. 16, Acts of Parliament, 2000 (India)
5
The Designs Act, 2000, § 35, No. 16, Acts of Parliament, 2000 (India)
6
The Designs Act, 2000, § 5, No. 16, Acts of Parliament, 2000 (India)
7
The Designs Act, 2000, § 7, No. 16, Acts of Parliament, 2000 (India)
8
The Designs Act, 2000, § 9, No. 16, Acts of Parliament, 2000 (India)
9
The Trademarks Act, 1999, § 2(zb), No. 47, Acts of Parliament, 1999 (India)
ten years after expiry of the said term 10. You will see frequent legal disputes going on with respect to
trademarks by prominent fashion designers.
For instance, in 2014 a suit was filed by well known Chanel brand against a salon brand named “Chanel
Jones”. The court held that word “Chanel” has now became a notable name for high fashion and style. Court
ordered that using the word “Chanel” was a trademark infringement and so to stop using it.
Another suit dealt with trademark infringement where an apparel brand named as “Penneys” had to change
its brand name to “Primark” because of the well known United States brand named as “JC Penny” which was
dealing in the same subject matter.
Recently, Fluid Trademarks are have been gaining immense popularity. They are considered to be the new
age of Trademarks. Fluid Trademarks are established from the original and well known trademarks and avoid
confusion for consumers, enabling them to recognize these Fluid Trademarks in the same way as it was with
the regular ones. These are made to grab attention and connect with people in a digital space through
customized marks made especially on different festivals and occasions. It can be registered but for temporary
period of time. A popular example is “Doodle” from Google.
Very recently when the pandemic hit, few big brands started redesigning their logos to promote social
distancing. “Kappa”, a renowned Italian sports brand modified their logo by adding some space between the
silhouettes. With such modification allowed under trademarks naturally in the year 2012, a question was
aroused: If a color can be trademarked or not?
 Christian Louboutin vs. Yves Saint Laurent
Under this case, Plaintiff had the registered trademark for “Red Soles”. Plaintiff sued the defendant because
they made monochrome shoes with the color red. It was held by the court that the color was not protectable,
the trademark is only going to protect the contrasting soles and not otherwise.
 Louis Vuitton vs. My Other Bag
Defendant was a Tote bags company which used to make drawings of well known, luxurious handbags on
one side of the bag and “My Other Bag” written in larger fonts on the other side of the bags. Plaintiff sued
the defendant claiming Trademark Infringement.
It was held by the court that products from My Other Bag are simply for comic purposes and does not create
any confusion among the consumers. So, the trademark used for the purpose of parody does not require any
license.
 Patanjali Ayurved Limited vs. Arudra Engineers Private Limited11
Arudra Engineers Private Limited sued Patanjali for using their registered trademark of word “Coronil”.
“Coronil” is used by Arudra Engineers Private Ltd. for industrial cleaning and chemical preparations. The
intrim order passed by the High Court of Madras was remained untouched by CJI Bobde and held that if we
restrain Patanjali from using the word “Coronil” during the covid19 times it will be terrible for the product.

PROCEDURE:
We have Brand Name registration in India i.e. procedure for Trademark filing in India. Procedure of
Trademark registration is contained under chapter 3 and from section 18 to section 26 of The Trademarks
Act, 1999.
1. SELF- SEARCH

10
The Trademarks Act, 1999, § 25(1), No. 47, Acts of Parliament, 1999 (India)
11
Murali Krishnan, Patanjali’s Coronil Sets Off a Trademark Dispute, Supreme Court Delivers its Ruling, Hindustan Times, (Aug
27, 2020, 06:37 PM), https://www.hindustantimes.com/
It is important to conduct a search among tons of trademarks whether registered or not so that our trademark
would stand out unique and can be registered easily. It also informs one about the existing competition in the
industry they operate in.
2. APPLICATION FILING:
As per the rules the trademark application should be filed by the owner claiming it. Application should be
supported by relevant documents attached in the prescribed manner12. The date of application for filling will
be deemed to be the date of registration13.
3. NUMBERING OF APPLICATIONS:
Post filing of application a unique number is provided which acts as a proof of such application.
4. EXAMINATION:
The application is examined and a detailed report is prepared within thirty days. Such report contains all the
observations made through the scrutiny process by the examination officer.
5. PUBLICATION:
Once the application is examined and accepted thereon, the registrar will send the application for publication
in the trade marks journal14. It is done to invite people who would like to object to the said trademark.
6. TRADEMARK OPPOSITION FROM PUBLIC:
Till four months of publication it will be open for public to oppose the said trademark. In such a case, counter
statement is filed by the applicant who states the reasons of such opposition being invalid. Both the parties
have to give evidences to prove the same. The registrar will go through it and if he is satisfied then he might
dismiss the application filed by the third party or call for hearing.
7. ISSUANCE OF CERTIFICATE:
After the due process, a certificate under the seal of trademark’s office is given 15. It will be applicable for
next 10 years and have to be renewed after the expiry of such time period.

III. COPYRIGHT:
Copyrights are protected in accordance with the provisions of the Copyright Act, 1957. Copyright is defined
in the act as the exclusive right given for literary works, dramatic works, musical works, inventive works,
cinematograph films, and recordings etc16. This Act protects only the expression and not the idea. Therefore,
while getting copyright registered, it should be noted that a product as a whole never gets protected instead
the act protects the design made on the product such as: print pattern. However, alimitation with design is
that if the design is capable of being registered under the Design Act, 2000 but is registered instead in the
Copyright Act 1957, then in case the design has been reproduced more than 50 times 17, the protection will
cease to have effect.
Following are few cases which show how copyright can be used to protect a company’s Intellectual Property:
 Star Athletica vs. Varsity Brands
This case raised the issue of whether the designs printed on the uniform of cheerleaders are protected under
the Copyright Act?

12
The Trademarks Act, 1999, § 18, No. 47, Acts of Parliament, 1999 (India)
13
The Trademarks Act, 1999, § 23(1)(b), No. 47, Acts of Parliament, 1999 (India)
14
The Trademarks Act, 1999, § 20, No. 47, Acts of Parliament, 1999 (India)
15
The Trademarks Act, 1999, § 23(2), No. 47, Acts of Parliament, 1999 (India)
16
The Copyright Act, 1957, § 14, No. 14, Acts of Parliament, 1957 (India)
17
The Copyright Act, 1957, § 15, No. 14, Acts of Parliament, 1957 (India)
Court was of the opinion that the designs are copyrightable because of the separability formula. Court said
that if the designs can be plucked out from the article and implanted on another one then it will come under
the head of two dimensional works hence will be eligible for copyright protection.
 Rajesh Masrani vs. Tahiliani Designs Pvt. Ltd
This case aroused the question of whether printed patterns will come under the head of artistic work or not
and if such patterns will be given protection under Copyright Act or Design Act?
The court held that such designs will be protected under Copyright act if more than 50 copies are not
produced of the same commodity for commercial usage.
 Ritika Private Limited vs. Biba Apparels Private Limited 
This case raised the issue of whether the real owner be protected under section 15(2) of Copyright Act, if the
owner has registered his designs in Copyright Act which were capable of being registered under Design Act
but was not so registered and has produced the commodity with the same design more than 50 times?
The court was of opinion that if the production of the commodity with same design incorporated on it crosses
the limit of 50 through industrial process then the copyright protection will cease to have effect and will not
remain with the real owner. The court held that defendant has not infringed the Copyright protection of the
plaintiff.

PROCEDURE:
Now we will discuss about the procedure of Copyright filing in India. Procedure of copyright registration is
contained under chapter 3 and from section 44 to section 50A of The Copyrights Act, 1957.

1. FILING OF THE APPLICATION:

The author of the work has to file the copyright application along with prescribed amount of fees; in return a
unique number will be given to the applicant18.
2. EXAMINATION:
Next step will be the Examination stage. Within 30 days the application is reviewed and scrutinized by the
examiner.
3. OBJECTIONS IF ANY:
If any objection arises the registrar will call the applicant for hearing and if he is satisfied then the further
procedure will be followed otherwise, if he is not satisfied the application will be rejected.
4. REGISTRATION &PUBLICATION:
Here the procedure comes to an end. After the registrar is satisfied with all the documents presented, all the
details with regard to the copyright claim will be jotted down in the register of copyrights maintained by the
copyright office19. The certificate of registration will be provided to the applicant. Thereafter, the particulars
of the work will be published in the official gazette in the prescribed form by the registrar of the copyrights20.
The certificate is granted for lifetime plus 60 years after the death of the applicant21.

IV. PATENTS:

18
The Copyright Act, 1957, § 45, No. 14, Acts of Parliament, 1957 (India)
19
The Copyright Act, 1957, § 44, No. 14, Acts of Parliament, 1957 (India)
20
The Copyright Act, 1957, § 50A, No. 14, Acts of Parliament, 1957 (India)
21
The Copyright Act, 1957, § 22, No. 14, Acts of Parliament, 1957 (India)
Patents are protected in accordance with the provisions of the Patents Act, 1970. Patent as defined in the act
means a Patent for any invention granted22 where the Invention means a new product or process involving an
inventive step and capability of industrial application 23. One might think that patents are not very much
relevant when it comes to fashion industry and its procedure is either way too expensive or strenuous but we
argue otherwise. Technical innovation can always put a fashion brand on the top of the heap and attracts
investors as well. In Patents there are two sub categories named as Utility Patent and Design Patent. One
must file for Utility Patent if they have created some unique, non-obvious process or machinery for the
production of the commodities. Wrinkled free garment, stoned washed denim jeans, collapsible shoe and
Nike’s automatic lacing system are instances of Utility patent. One must file for Design Patent if they have
created any non- functional or aesthetic features in their invention for instance Beverage holding sweatshirt.
Recently people have been fighting legal battles on their design patents like:
 Puma vs. Forever 21
Puma filed the suit against Forever 21 for the infringement of its design patent. Puma launched new range of
shoes such as Creeper Sneaker, Fur Slide and Bow Slide which were designed by Rihanna Fenty and because
of which these were named as Fenty Shoes. Soon after, Forever 21 launched their shoes range which was
similar to those of puma’s Fenty shoes.
The court held that, the dissimilarities between the two are too less and any ordinary observer cannot
differentiate between them. Hence, Puma’s claims regarding design patent infringement were upheld.
 Spanx, Inc. vs. Times Three Clothier, LLC24
A company named TTC sent a cease and desist letter to the company named Spanx for the infringement of
their Design Patent and asked them to cease three panel designs of slimming tank tops which are already
patented in their company’s name and to pay damages for the same. Spanx in order to seek declaratory
pronouncement proceeded against TTC and argued that there are substantial differences from the former’s
design. The suit was concluded by settlement.

PROCEDURE:
Here we discuss, the procedure of Patent Filing in India. Procedure of Patent registration is contained under
chapter 2 to chapter 8 of The Patents Act, 1970.

1. PATENTIBILITY CRITERIA:
Before going forward with the invention, one must know that all patents are not patentable25. So it is
mandatory to know what subject matter leads to patent registration and what not.
2. SEARCH & DRAFT:
This is the key procedure in patent registration. This will let the inventor(s) know if the patent is novel and
non-obvious or not. This step is highly recommended because it warns the inventor about all the prior
inventions known to public related to that of inventor. This is going to help in drafting the patentability
report.
3. FILING OF THE APPLICATION:

22
The Patent Act, 1970, § 2(1)(m), No. 17, Acts of Parliament, 1970 (India)
23
The Patent Act, 1970, § 2(1)(j), No. 17, Acts of Parliament, 1970 (India)
24
Amy Langfield, Battle of the Bulge: Spanx vs. Yummie Tummie Over Patent, CNBC, (March 14, 2013, 12:06 PM)
https://www.cnbc.com
25
The Patent Act, 1970, § 3, No. 17, Acts of Parliament, 1970 (India)
Now from here the actual procedure begins. After the drafting is completed the application should be filed
with the government Patent Office. Now, there are two patent application the inventor can file, one is
provisional patent application which is filed so that no third party can claim patent over the same idea and
other is complete specification which is filed once the invention is completed. The date of application filling
will be deemed to be the date of registration26.

4. PUBLICATION OF THE APPLICATION:

After 18 months of filing complete specification, the application is published. There is a special provision of
publishing it before 18 months of time period requiring an official request by the inventor and payment of
prescribed fees for it.
5. EXAMINATION:
Then the applicant has to request for the examination of the patent application in the patent office. The patent
examiner reviews the application with several criteria’s and makes a detailed First Information Report27.
6. RESPONSE TO THE OBJECTIONS:
If any objection arises by the way of examiner’s report then applicant has to file a response for that matter,
which states all the possible contentions which negate the objections made against the application.
7. PATENT IS FINALLY GRANTED:
After fulfilling all the objections being raised in the last step and succeeding therefore, the patent is granted
to the applicant. Following this, patent is published in the patent journal for the public to know28. The patent
is enjoyed by the inventor for a period of 20 years in India and after the expiry it goes straight into the public
domain.

CONCLUSION:
The Fashion Industry is a reflection and inspiration of dreams because it defines a lot of people and a lot in
people. Fashion industry has 100% participation and is not going away anytime soon whether it is in stores,
digital stores or social networking stores (like Instagram). The key source of competitiveness advantage one
business has over the other in the Fashion Industry is innovation and the creative way of expressing it.
Fashion is unpredictable and keeps on evolving and to catch-up with the demands it leads to theft of one’s
blood, sweat and tears. Designers in order to cope up with the changing trends, find it expensive to chase
counterfeiters both financially and time wise. Even if they do so and sue all the counterfeiters, it takes years
for the judges to give their judgment as they are backed up with many more cases. As stated by many fashion
designers themselves, they find it unreasonable to protect the designs which have such short product life
cycle and so they hesitate to put their hard earned money and considerable time into it. Today, the
technological advancement by leaps and bounds have not only ensured a positive impact on marketing and
sales in apparel industry but also it leaves a negative impact as it reaches wider audience which leads to an
increase in chances of the market flooding with fakes and copied designs. Another limitation posing a barrier
for IP protection is the territorial nature of intellectual property which means the protection is confined to the
territories of one country only where it is registered and if it is breached in another country then the remedies
would not be available until and unless the IP is protected as per the laws in that particular country. Hence,
there is no specific legislation meant for protection in intellectual property in fashion industry and fast track
courts for such matters but we hope to see that soon. Till then we should keep educating and training the

26
The Patent Act, 1970, § 45, No. 17, Acts of Parliament, 1970 (India)
27
The Patent Act, 1970, § 12, No. 17, Acts of Parliament, 1970 (India)
28
The Patent Act, 1970, § 43, No. 17, Acts of Parliament, 1970 (India)
fashion designers about their present rights. It is necessary for all the owners in fashion industry to seek
advice regarding IP protection to increase the sales, boost income, increase their profit margins and
discourage all the competitors from copying it.