Professional Documents
Culture Documents
Intellectual Property Rights Protection
Intellectual Property Rights Protection
: A Panoramic View
By Shishir Tiwari*
I. Prolegomena
Fashion 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_Design
er_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 to
be growing at a compounded growth rate of 12%. By the year 2020, the industry is estimated to grow
over 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.
5 The gravity of this problem can be well understood by a statement made way back in 1993 by Naresh
Gujral. Gujral was at the helm of affairs of SPAN India, woman's clothing line and one of the larger
garment export companies in India, at that time. He said, We make Rs.30 crore a year. It would be
Rs.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-
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 first designer to have his label sewn into the garment that he created. He set up a fashion house in
Paris. It was he who started the tradition of fashion houses and telling his customers what kind of
clothing would suit them. Earlier clothing design and creation was handled by anonymous
seamstresses and high fashion was that which was worn at Royal Courts. Clothing created only after
1858 is considered as fashion design. The traditions of designers sketching out garment designs
instead 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 , available
at, <http://en.wikipedia.org/wiki/History_of_fashion_design>.
12 Established in the year 1868, Syndical Chamber s headquarter is located at Paris. For more
To conclude, fashion design represents human intellect and creativity. And this
creativity comes to the fore in tangible form on the products of fashion.
(accessed on 24/12/2013).
17 Sara R. Ellis (2010), Copyrighting Couture: An Examination of Fashion Design Protection And Why
The DPPA And IDPPPA Are A Step Towards The Solution To Counterfeit Chic , Tennessee Law
Review, 78: 163-211, p. 168.
18 Biana Borukhovich (2008-09), Fashion Design: The Work of Art that is Still Unrecognized in the
United 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 Material
World: 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).
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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 of
free design appropriation speeds diffusion and induces more rapid
obsolescence23 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 Designs
in 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 Forest
Intellectual 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 Journal
of Law & the Arts, 32(3): 333-363; Erika Myers (2009), Justice in Fashion: Cheap Chic and the
Intellectual Property Equilibrium in the United Kingdom and the United States, AIPLA Quarterly
Journal, 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 of
Law, 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 Property
Journal, 4: 73-118; Kristin L. Black (2010), Crimes of Fashion: Is Imitation Truly the Sincerest Form
of 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 Law
Journal, 42: 247-293; Sara R. Ellis (2010), Copyrighting Couture: An Examination of Fashion Design
Protection 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 the
Material 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 Analysis
of Copyright Law Protection for Fashion Design in Asia and the United States , American University
Business Law Review, 1(2): 368-396; Jessica Rosen (2013), The Inability of Intellectual Property to
Protect the New Fashion Designer: Why the ID3PA Should Be Adopted , Golden Gate University Law
Review, 43(2): 327-353.
20 See, e.g., Kal Raustiala and Christopher Sprigman (2006), The Piracy Paradox: Innovation and
Intellectual 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 a
Moral 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 more
rapid obsolescence of designs in at least two broad ways. Firstly, copying often results in the
marketing 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 of
fashion goods. Designers in turn respond to this obsolescence with new designs.
In short, piracy paradoxically benefits designers by inducing more rapid
turnover 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 not
point-by-point reproductions at all, but instead new garments that appropriate design elements from
the original and recast them in a derivative work. Thus, a regime of free appropriation contributes to
the 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,
design 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, at
HEARING Before The Subcommittee On Courts, The Internet, And Intellectual Property Of The
Committee On The Judiciary House Of Representatives One Hundred Ninth Congress Second
Session On H.R. 5055 on 27 July 2006 (hereinafter HEARING], available at,
<http://www.gpo.gov/fdsys/pkg/CHRG-109hhrg28908/html/CHRG-109hhrg28908.htm> (accessed
on 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
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.
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:
may consist of the shape and/or pattern and/or colour of the article. To be considered as an industrial
design, a design must satisfy the following two conditions:
1) The ornamental or aesthetic aspect must appeal to the eye. In other words design must be
judged solely by the eye and not by any functional considerations. The words judged solely by
the eye intend to exclude cases where a customer might choose an article of that shape not
because 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 not
by the suitability of the article for any purpose. However, certain design features of an article
may perform a useful purpose whilst also affecting the appeal of the article to the potential
customer.
2) The article must be reproducible by industrial means. If this element is missing, the creation
may 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 On
Intellectual Property, Geneva: WIPO, p. 189.
33 Enacted on 25th May 2000, the Designs Act came into force on 11 th May 2001. Full text of the Act is
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
As per the provisions of the Designs Act, copyright in the registered design subsists
for a period of ten years from the date of registration 38 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
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.
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.
2) The import for the purpose of sale, any article, belonging to the class in which the design has
been duly registered, on which is applied the registered design or fraudulent or obvious
imitation thereof.
3) The publication or exposure or causing to publish or exposure for sale a pirated article
knowing 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
15/01/2014).
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 features
of, in particular, the lines, contours, colours, shape, texture and/or materials of the product
itself 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.
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.
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
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 or
external) 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
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 is
available 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 IDPA
be likely to be mistaken for the protected design, and contains only those differences in construction
or design which are merely trivial.
63 Explaining when design is made public? , Section 1310 (b) of the Copyright Law of the United
States provides:
A design is made public when an existing useful article embodying the design is anywhere
publicly exhibited, publicly distributed, or offered for sale or sold to the public by the owner of
the 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.
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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Filing of Applications
Re-examination
Abandoned
Hearing if
Refusal Compliance of
Objection(s) is
Objection(s)
contested
Appeal to
Waving/Removal Acceptance
High Court
of Objection(s)
In Case of Allowance of
Appeal
Issue of Certificate of
Registration
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.
65 The Copyright Act came into force on 21 st January 1958. Full text of Act is available at,
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 following
two conditions:
1) It is a design as per Section 2 (d) of the Designs Act, 2000 and
2) 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 to
Section 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
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.
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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.
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designers who make exclusive lines, where reproduction is limited, copyright law acts
as a powerful tool of protection.78
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,
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. in
Microfibres 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:
protection. Therefore, to be entitled to protection under the Copyright Act, the design should
have originality.
On Section 15 of the Copyright Act, 1957
1. 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 design
registered 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, the
design 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) the
copyright in the design ceases as per Section 15 (2) of the Copyright Act unless it is registered
under the Designs Act.
4. The operation of Section 15(2) of the Copyright Act does not exclude from the ambit of
Copyright protection either the original 'artistic work' upon which the design is based or the
design which by itself is an artistic work. What stands extinguished under Section 15 of the
Copyright Act is the copyright in the design itself as applied to an article and not the copyright
in the artistic work itself. The original artistic work, as contrasted with the applied artistic
work that is the design, would continue to fall within the meaning of the artistic work defined
under Section 2(c) of the Copyright Act, 1957 and would be entitled to the full period of
copyright protection. The commercial/industrial manifestation of original artistic work such
as the design derived from and founded upon the original artistic work for the purpose of
industrial production of furnishings would only be covered by the limitations placed in
Section 15 of the Copyright Act.
5. The object of the two legislations was to prevent long term usage by the person who was
commercially exploiting something and yet wanting to claim an exclusive monopoly through
longer period of copyright protection afforded to an artistic work. Section 15 of the Copyright
Act 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 is
commercial in nature has been granted lesser period of protection. On the other hand, pure
artistic works per se have been granted a longer protection. This is precisely why the
legislature not only limited the protection by mandating that the copyright shall cease under
the Copyright Act in a registered design, but in addition, also deprived copyright protection to
designs capable of being registered under the Designs Act, but not so registered, as soon as
the concerned design had been applied more than 50 times by industrial process by the owner
of the copyright or his licensee.
82 Paragraph 45 of the Division Bench s Judgment. This paragraph was referred and relied upon by the
Division Bench of the Delhi High Court, albeit in different factual circumstances, in Kiran Shoes
Manufacturers 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.
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 to
be 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.
[H]aving regard to the definition of a design under Section 2(d) of the Designs
Act, it may not be possible to register simultaneously the same mater as a
design and a trade mark. However, post registration under Section 11 of the
Designs Act, there can be no limitation on its use as a trademark by the
registrant of the design. The reason being: the use of a registered design as a
trademark is not provided as a ground for its cancellation under Section 19 of
the 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 Rajiv
Shakdher and Sanjay Kishan Kaul, JJ., whereas dissenting opinion was rendered by Manmohan
Singh, 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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Protection Available to Designs in
India