Need for Amendment in the Designs Act, 2000 for Protection against Piracy of Unregistered Fashion Designs in the Industry

Fashion industry in India is growing day by day and it has experienced significant expansion in the last decade mainly driven by the growth of domestic designers, some of whom have gained international recognition in recent years. 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. The industry people, particularly fashion designers, have been found complaining about their innovations being imitated and copied. This paper aims establish that there is a requirement of laws for protection of unregistered fashion designs in India considering the growth of the fashion industry in the current times where piracy of designs has become a common problem which acts as a barrier to creativity of new designs which on copying loses its value. Hence, instead of resorting to the Copyright Act or the Trademarks Act for protection of their designs, the fashion designers deserve a single legislation which protects the product of their creativity without having to go through the process of registering each and every design that they create and also gives a chance to the upcoming designers to display their creations in the market without the issue of piracy in the industry. The paper will enhance the need for the amendment or revision in the Designs Act, 2000 by comparing and contrasting the international laws regarding protection of unregistered designs and providing suggestions and recommendations to be made in the current Indian law for protection of designs. Considering the stakeholders at hand, there is a necessity for reform of the current law which would not only encourage creativity and innovation among designers but also ensure that these designers have fallback options in case of piracy of their designs.

I. Introduction

Fashion industry in India is growing day by day and it has experienced significant expansion in the last decade mainly driven by the growth of domestic designers, some of whom have gained international recognition in recent years.² 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. The industry people, particularly fashion designer, have been found complaining about their innovations being imitated and copied. Fashion industry has long been 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. Fashion design represents human intellect and creativity and this creativity comes to the fore in tangible form on the products of fashion. As a product of human intellect and creativity, fashion design is an apt subject matter for IPR protection without any iota of doubt. 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. 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.³ Unlike the music and motion picture industries, the fashion industry has not embarked on any substantial anti-piracy initiative.⁴

II. Protection of designs from piracy

The orthodox view of IP law holds that piracy is a serious, even fatal threat to the incentive to engage in creative labor. Certainly, the film, music, software, and publishing industries have used the orthodox theory of IP rights to demand increased legal protections.⁵ In India, The Designs Act, 2000 affords protection to the “design” registered under the Act. This means that any design that fits into the definition of design provided under Section 2(d) of the Act and is registered under the Act can get protection against infringement of the right provided under this Act. 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 and may be extended further for a second period of five years on the application regarding the same. But the Act provides protection to only registered designs and not unregistered designs. With the fashion industry thriving as the years pass by, the need for protection of designs of the designers has become the need of the hour to promote innovation as a result of which this Act was introduced to protect industrial designs from piracy.

Section 2 (d) of the Designs Act defines the term “design” as follows: “[D]esign” means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article whether in 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 of construction or anything which is in substance a mere mechanical device, and does not include any trade mark as defined in clause (v) of sub-section (1) of section 2 of the Trade and Merchandise Marks Act, 1958 or property mark as defined in section 479 of the Indian Penal Code or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957.

It means that not every design but only those designs which fit into the definition of “design” as provided under Section 2 (d) of the Act can be registered under the Designs Act. Apart from it, a design, to get registration and, consequently, to get protection under the Designs Act, must satisfy the ensuing conditions as well:

1) It must be new or original.

2) It must not have been disclosed to the public anywhere in India or in any other country by publication in tangible form or by use or in any other way prior to the date of filing for registration.

3) It must be significantly distinguishable from known designs or combination of known designs.

4) It must not comprise or contain scandalous or obscene matter.

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, color 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.⁶ 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 and may be extended further for a second period of five years on the application regarding the same. During the existence of copyright in registered design, the Designs Act protects registered design from piracy. If a person commits any act involving piracy of registered design, he is liable, on every act of piracy, to pay to the registered proprietor of the design a sum not exceeding twenty five thousand rupees recoverable as a contract debt or if the proprietor elects to bring a suit for the recovery of the damages for any such act involving piracy, and for any injunction against thereof, to pay such damages as may be awarded and to be restrained by injunction accordingly and the total sum recoverable shall not exceed fifty thousand rupees.

The provisions of the Designs Act, 2000 no doubt provides protection if designs are registered under the Act, but it does not suit the current needs of the fashion industry, mainly for three reasons:

1. Unregistered designs do not have protection from the Act.

2. Time consuming registration process.

3. Inadequacy of damages.

Needless to say, that knockoffs represent not only a failure on part of the law implementation agencies but also the Legislature and the Judiciary in understanding the true nature of the work and protection that it mandates. Such copying comes easy, in the first place because there is lack of clarity in the laws and also a lack of clarity with the creator on which law would apply to his work.⁷

In the case of Microfibres v. Girdhar⁸ the plaintiff filed a suit against the defendant for copyright infringement under ‘artistic works’ applied to upholstery fabrics and for attempting to pass it off as their goods. It was submitted by the plaintiff that the upholstery fabric print was unique and feel under the ‘unique and original artistic works’ category under the Copyright Act, 1957. It was pleaded by the defendants that the plaintiffs did not merit protection for those fabrics under the Copyright Act in the first place and if at all a valid claim were to subsist, it was to be dealt with under Designs Act, 2000 as the upholstery fabric designs were relating to textile products. They further contented that since the plaintiffs failed to obtain registration of the design under the Designs Act, they resorted to the Copyright Act for protection of the designs which was untenable in the light of existing framework of both the Acts. The Court held that copyright protection to the designs of the plaintiff is ceased in this case as the article had been produced more than 50 times by an industrial process by the plaintiff and according to Section 15(2) of the Act, once a copyright in a design is applied to an article by an industrial process for more than 50 times, ownership of the copyright ceases because the copyright resulting in creation of the article is capable of being registered under the Designs Act, 2000 but has not been registered by the plaintiff. The Court also held that Copyright Act extends protection to a wide connotation of ‘artistic works’ but which do not have a visual appeal. All those designs (artistic works) which have a visual appeal is eligible for registration and protection of the registered work under the Designs Act, 2000.

In the case of Ritika Pvt. Ltd. v. Biba Apparels Pvt. Ltd⁹. the plaintiff filed a suit claiming copyright in various drawings and sketches which are created by the plaintiff for dresses being sold under the trade name/brand RITU KUMAR. It was pleaded that there is originality in the garment prints and sketches created by the plaintiff for the dresses/garments. A relief of injunction seeking restraint against the defendant from reproducing, printing, publishing, distributing, selling, offering etc. of prints or garments which are colourable imitation or substantial reproduction of the plaintiff's prints and garments and other related reliefs of injunctions and rendition of accounts were claimed against the defendant. The issue urged on behalf of the defendant for seeking dismissal of the suit is as per the provision of Section 15(2) of the Indian Copyright Act, 1957 and which provides that once a copyright in a design is applied to an article by an industrial process for more than 50 times, ownership of the copyright ceases because the copyright resulting in creation of the article is capable of being registered under the Designs Act, 2000 but has not been registered by the plaintiff. It was therefore argued that non-registration under the Designs Act by the plaintiff of its drawings, sketches or design with respect to its garments and dresses will not extinguish the rights of the plaintiff to the copyrights existing in the plaintiff in such works and the defendant is, therefore, liable to be injuncted from infringing the copyrighted works of the plaintiff.

In the case of Rajesh Masrani v. Tahiliani Design Pvt Ltd.¹⁰ 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. The plaintiff, alleged infringement of copyright by the defendant on the ground that there was a colourable imitation or substantial reproduction of the plaintiff's fabric prints including the underlying drawings/sketches thereof, or of any other of the plaintiff's copyrighted works including works of artistic craftsmanship or other literary or artistic works. The defendant/appellant raised two contentions: firstly, the plaintiff/respondent had no right to claim protection under the Copyright Act, 1957 as the artistic work for which copyright was alleged to exist was actually 'design' which came under the purview of the Designs Act, 2000 and since the same was not registered under the Designs Act, the plaintiff was not entitled to protection under the said Act and secondly, the textile design did not constitute 'artistic work' within the meaning of Section 2(c)(i) of the Copyright Act and was, therefore, not capable of protection. The 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.

III. International laws for protection of unregistered designs

The European Union (EU): In the EU, industrial design 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]. The 2002 Regulation includes provisions relating to “registered Community design protection” and “unregistered community design protection” for designs. The major difference in the extent of the protection given by a registered Community design over that of an unregistered Community design is that the registered Community design can protect against both copying and independent creation of an identical/similar design. An unregistered Community design will be protected against copying only. Unregistered Community design protects a design for a period of three years from the date on which the design was first made available to the public within the Community which is more suitable to those industries which are producing large numbers of possibly short-lived designs over short periods of time particularly fashion industry.¹¹ It is designed to create a uniform legal regime to protect industrial designs and creations across the EU. Such protection is vital for numerous key sectors of the economy, including, but not limited to- clothing, textiles, shoes, cars, jewelry, furniture, tableware, and ceramics. The Regulation now makes EU-wide design protection cheap and simple to obtain.¹²

The United Kingdom (UK): In United Kingdom (UK), the law relating to the protection of industrial designs has been laid down in two different legislations which includes, The Registered Designs Act, 1949 and The Copyright, Designs and Patents Act, 1988. The Copyright, Designs and Patents Act, 1988 in particular governs the provisions for design rights which subsist in an unregistered design in the UK. The Act introduced a new UK intellectual property right – unregistered design right (UKUDR) to replace the role of copyright in protecting the designs of three dimensional items which were not themselves artistic. It protects the shape and configuration of the design of 3D objects against copying by others. Like copyright, the first owner of UK unregistered design right is the creator of the design, unless the design is created in the process of a person’s employment in which case the owner is the employer.¹³ The owner of design right in an unregistered design has the exclusive right to reproduce the design for commercial purposes by making articles to that design. Reproduction of a design means copying the design so as to produce articles exactly or substantially to that design. In other words, an unregistered design right is limited in nature. It does not allow monopoly rights but the owner is protected from copying of his/her design. 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.¹⁴ UK unregistered design rights are an important commercial asset and can provide effective and valuable protection in many business sectors particularly in the fashion industry so that upcoming designers don’t face a hit in their business due to copies of their original designs being displayed in the market.

The United States of America (US): Under the US patent law statute, no protection is presently available for unregistered designs. But the Innovative Design Protection and Piracy Prevention Act, 2011 [hereinafter ID3PA] and the Innovative Design Protection Act, 2012 [hereinafter IDPA] 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. Both the Bills seek to protect, without registration, the fashion design apparel from another which is “substantially identical” for a period of three years from the date the design is first made public. 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.¹⁵ The Acts don’t require the registration of designs but only for the design to be made public. The reason these Acts were introduced were to protect the independent and upcoming designers whose business is at a risk of going under loss due to counterfeiting and knockoffs of their original designs in the market.

Thailand: Similar to laws in the US, fashion design in Thailand can be protected under different intellectual property laws; particularly trademark, design patents and copyright. Thai Trademark Act B.E.2534 (1991) protects mark used with fashion design product and prohibits the uses of identical mark or similar mark that the public might be confused or misled as to the owner or origin of the product. However, trademark law does not protect the design of the product itself. The Patent Act B.E.2522 (1979) includes 3 types of patents in the same act which are patent, design patent and petty patent. Design patent protects “any form or composition of lines or colours which gives a special appearance to a product and can serve as a pattern for product of industry or handicraft,” while patent and petty patent focus on new invention. Under article 56, the design has to be “new” from known or used design to be eligible for protection.¹⁶

Israel: Israel’s new Designs Act came into force in August 2018 replacing the old Patents and Designs Ordinance, Under Section 4(a) this Act, a design may be protected as an unregistered design if it is new and of individual character and provided that it was offered for sale or distributed to the public in Israel in a commercial manner, including online, by the design owner or on the owner’s behalf, within six months of its disclosure date to the public, in or outside Israel. Chapter 5 of the Act lays down the provisions related to unregistered design rights. Chapter 7 of the Act lays down the remedies for infringement of design rights.

IV. Conclusions and recommendations

Design registration is a pre-requisite condition for availing protection under the Designs Act, 2000. The Designs Act fails under the aspect of encouraging innovation and creativity of designers on the basis that even if the fashion industry is dynamic and cyclic in nature a protection which is limited in nature and period can only be acquired by the designers after going through the big hassles of registering under the Act. The unregistered designs as a result face major loss due to piracy of their designs and no protection against such piracy provided by the law. Hence this proves the need for an amendment to include a clause which protects unregistered designs from piracy otherwise known as automatic protection of designs created, so that the designers need not resort to any other legislations such as the Copyright Act, 1957 for protection of their creations. There is also a need to widen the definition of ‘design’ so as to include all kinds of expressions of design and to give the original designer the design rights over their creation under a single and effective legislation as well as remove the bar on the amount of damages payable to the designer considering the stakeholders involved and due to the amount of time, effort and money spent by them on creating a design or collection of designs.

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Footnotes

1. Author is a student at School of Law, Christ (Deemed to be University), India

2. Grail Research (2009), The Global Fashion Industry – Growth in Emerging Markets (Research Report), 1-22, available at, <http://www.grailresearch.com/pdf/ContenPodsPdf/Global_Fashion_Industry_Growth_in_Emergi ng_Markets.pdf>. ↩

3. Shishir Tiwari, Intellectual Property Rights Protection of Fashion Design in India, SSRN Electronic Journal 1, (2014). ↩

4. Raustiala, Kal and Sprigman, Christopher Jon, The Piracy Paradox: Innovation and Intellectual Property in Fashion Design. Virginia Law Review, Vol. 92, p. 1687, 2006, UCLA School of Law Research Paper No. 06-04, Available at SSRN: https://ssrn.com/abstract=878401. ↩

5. Id. ↩

6. Shishir Tiwari, Intellectual Property Rights Protection of Fashion Design in India, SSRN Electronic Journal 1, (2014). ↩

7. Sunanda Bharti, Legal Protection of Fashion Design in Apparels in India: A Dilemma under the Copyright and Design Law, 3 DUJHSS 139, 145 (2016). ↩

8. (32) PTC 157 Del. ↩

9. (2016) DLT109. ↩

10. AIR 2009 Del 44. ↩

11. Shishir Tiwari, Intellectual Property Rights Protection of Fashion Design in India, SSRN Electronic Journal 1, 12-13 (2014) ↩

12. Christopher M. Aide, The Community Design: European Union-Wide Protection for Your Design Portfolio, 1 Nw. J. Tech. & Intell. Prop. 35 (2003). ↩

13. Design rights: Protecting your design rights in the UK and the EU, CLARKE WILLMOTT, https://www.clarkewillmott.com/legal-services/intellectual-property-lawyers/design-rights/ ↩

14. Shishir Tiwari, Intellectual Property Rights Protection of Fashion Design in India, SSRN Electronic Journal 1, 13 (2014) ↩

15. Shishir Tiwari, Intellectual Property Rights Protection of Fashion Design in India, SSRN Electronic Journal 1, 14 (2014) ↩

16. Narumon Saardchom, Risk of Intellectual Property Among Fashion Designs, 20 JLERI 1, 5-6 (2017). ↩