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THE POWER OF
INDUSTRIAL DESIGNS
IN THE TEXTILE & APPARELS SECTOR
Dr. Nilanjana Bairagi , NIFT Delhi
&Jyotsna Balakrishnan
Anand & Anand, New Delhi
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DESIGN RIGHTS HAVE ANIMPORTANT ROLE TO PLAY IN THE
FASHION INDUSTRY
The important purpose of design
Registration is to see that the artisan,creator, originator of a design having
aesthetic look is not deprived of his
bonafide reward by others applying it to
their goods.
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POSSIBLE REASONS WHY IPRs ARETHOUGHT TO BE NOT APPLICABLE
TO THE FASHION INDUSTRY?
The nature of fashion design necessarily
attracts imitationfashionfollowing
The transitory/seasonal nature of the fashionindustry & markets
The fear that protection may paralyse thefashion industry by creating monopolies
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Why is it important for the fashioncommunity 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 crucialdetermining factors in consumer choice
A unique & innovative design can thus be the
USP (Unique Selling Point ) for yourbusiness
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IPRs & the fashion industry
IfChinas strength lies in volumes, Indias liesin value addition
The recognition of the role of the DESIGNER& the immense value of the INTANGIBLEthat they create.
International experience shows thatprotection stimulates growth rather than stuntthe fashion industry eg., France
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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 infringingothers rights
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DESIGNS
Functional /
utilitarian
Patents
Act, 1970
Purely
artistic works
Copyright
Act, 1957
Designs with
eye-appeal & capable of
Industrial application
Designs
Act, 2000
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A DESIGN UNDER THE DESIGNS
ACT, 2000 2D or 3D features ofshape, configuration,
pattern, ornament, composition of lines,colours
Applied to any article by any industrialprocess or means
The finished article appeals to the eye
Does not include anything which is insubstance a mere mechanical device
Not an artistic work or trademark
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DESIGNS CAN BE 2D OR 3D OR
COMBINATION OF BOTH Surface pattern (2D)
Cut of the garment
(3D)
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DESIGNS EXCLUDED FROM
PROTECTION Not NEW orORIGINAL
If the design has been disclosed to thepublic in India or elsewhere (exception isprovided for exhibitions)
Not significantly distinguishable from known
designs or a combination of known designs
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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 NEWAND ORIGINAL
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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
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TRADE VARIANTS
Le May v. Welch: It cannot be said thatthere is a new design every time a coat
or waistcoat is made with a differentslope or different number of buttonstohold that would be to paralyse industry.
Thus, trifling variations/immaterialdetails would not be considered NEW
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WHAT IS NOVELTY
Strikingly different appearance
Pattern made up of old features but
resulting combination with strikingly
different appearance can be novel
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Example of Novelty
Wallpaper
Manufacturers
Limitedcase
Wallpaper pattern
held to be a new
and original
combination of
known designs
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What is meant by Design
under the Designs Act, 2000 ? Design means only the features of shape, configuration,
pattern or ornament or composition of lines or colour or
combination thereof applied to any article whether two
dimensional or three dimensional or in both forms, by any
industrial process or means, whether manual, mechanical
or chemical, separate or combined, which in the finished
article appeal to and are judged solely by the eye, but does
not include any mode or principle or construction or anything which is in substance a mere mechanical device, and
does not include any trade mark , property mark or artistic
works.
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What is meant by an article under theDesigns Act, 2000 ?
Under the Designs Act, 2000 the
"article" means any article of
manufacture and any substance,artificial, or partly artificial and partly
natural; and includes any part of an
article capable of being made and soldseparately;
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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 asconfidential information
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Design Registration in India
DesignsThe application for registration of a design can
be filed at the Patent Office at Kolkata and itsBranch Offices at New Delhi, Mumbai andChennai.
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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
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Can stamps. Labels, tokens, cards, beconsidered an article for the purpose
ofregistration of Design?
No. Because once the alleged Design i.e.,ornamentation is removed only a piece ofpaper, metal or like material remains and thearticle referred ceases to exist. Article musthave its existence independent of theDesigns applied to it. [Design with respect tolabel was held not registrable, by an Order on
civil original case No. 9-D of 1963, Punjab,High Court]. So, the Design as applied to anarticle should be integral with the article itself.
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WHY REGISTER YOUR DESIGN?
DESIGNS ACT, 2000 Statutory right applies- only on
registration - territorial
Right to prevent all other from producing,importing, selling or distributing productshaving an identical appearance or afraudulent or obvious imitation
Monopoly Period of 10 years extendableby 5
Gives you a Unique Selling Point (USP)
Is an asset & can be licensed
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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
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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
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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 thecontract
Also, where a part of the design process issourced out, it should be spelt out
While designing for someone else, be clear inthe contract on who owns the design
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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 beclaimed over them?
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THE DESIGN DEVELOPMENT PROCESS
For example, TEXTILES:
Sketches Engineered templatesFilm tracing Screens
Engraving/printing Fabrication
Each on of the above can qualify as artistic
works under the Copyright Act, 1957
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COPYRIGHT & DESIGN LAWS
A distinction has thus sought to be drawn
between purely artistic works and works
which are commercialised by industrialapplication
The rationale is that when artistic works are
commercialised, they do not deserve theprotection granted under the Copyright Act
and come within purview of the Designs Act
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Artistic work Overlap of Rights?
Copyright does notsubsist in designregistered under theDesigns Act
Design capable of beingregistered, but whichhas not been soregistered - copyrightshall cease as soon asany article to which thedesign has beenapplied more than fiftytimes by an industrialprocess
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Copyright & Designs Law
However, it may not be practically possible fora 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 onthe basis of the underlying artistic works (i.e.,the sketches, engravings, prototypes, etc.)though Section 15 (2) remains a bar
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Copyright & Designs Law
It is therefore important to maintain
documentation and records at every stage of
product design and development as this mayhelp in claiming protection for a design under
the Copyright Act, 1957
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DESIGN Vs. COPYRIGHT
DESIGN COPYRIGHT
Complete monopoly Only protects against
copying
Need to register to
claim protection
Subsists inherently
Has to be NEW No requirement for
noveltyMaximum 15 years Life of author + 60 years
Only in respect of
goods registered for
Is not goods specific
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DESIGN AS A TRADEMARK
The Epi styleleather design of
Louis VuittonMalletier
Protected as a
trademark againstpiracy by the DelhiHigh Court
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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 ofthe author
Essential to specify in the license- the term,
territory, amount of royalty & type of productsfor which design can be used by licensee
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Is marking of an article compulsory inthe cases of article to which a
registered design has been applied? Yes, it would be always advantageous to the
registered proprietors to mark the article so as toindicate the number of the registered design except
in the case of Textile designs. Otherwise, theregistered proprietor would not be entitled to claimdamages from any infringer unless the registeredproprietor establishes that the registered proprietortook all proper steps to ensure the marking of the
article, or unless the registered proprietor show thatthe infringement took place after the person guiltythereof knew or had received notice of the existenceof the copyright in the design.
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PIRACY OF REGISTERED DESIGN
Anyone who applies or causes to be appliedto any article the design or any fraudulent orobvious imitation of it
To see whether the essential design featuresare substantially similar between the articleand the design representation
It is the overall general impression ofsimilarity which is taken into account
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Example of infringement of
registered design Birkin v. Pratt
Lace pattern was
held to have beeninfringed
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YSL v. Ralph Lauren
YSL was awarded
damages for Ralph
Laurensinfringement of the
design rights in YSLs
design of its tuxedo
dress
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The Suneet Verma controversy
Lessons to be learnt Need to assert rights
over your designs
think that you arecreating Intellectual
Property from Day 1
of product design &
development and notjust when your design
gets copied
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The Suneet Verma controversy
Lessons to be learnto At the same time, if
you need to use a
design, do duediligence over its
ownership give
credit take a
license if you doneed to use it
I it d t t k th ti l b
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Is it mandatory to make the article byindustrial process or means before
making an application for registrationof design ?
No, design means a conception or suggestionor idea of a shape or pattern which can be
applied to an article or intended to be appliedby industrial process or means.
Example- a new shape which can be appliedto a pen thus capable of producing a new
appearance of a pen on the visualappearance. It is not mandatory to producethe pen first and then make an application.
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CONCLUDING OBSERVATIONS
o The Design right needs to be used to support andleverage the enormous amount of creativity andpotential of Indian designers time has come to
actively harness it dont just wake up when yourdesign gets copied, start thinking about it fromDay 1 of product creation and development
o A unique design for which you see commercialvalue and which you intend to commericalise, getit registered as a design
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CONCLUDING OBSERVATIONS
Till the time you file a design application, treat it asconfidential when you need to disclose it towholesalers/exporters/in a portfolio
Have clarity on the ownership of the designs thatyou create by entering into contracts that spell outwho owns the designs
o Maintain documentation and records at every stageof product development helps you claim copyrighteven if your design is unregistered
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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
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CONCLUDING OBSERVATIONS
o The fashion design community should
lobby and build pressure on legislators
and the government to provide for anunregistered design right as exists
in the European Union