Legal Protection for creative designs in the Indian fashion industry: A continuing dilemma

Introduction

Fashion and textile industries are prominent sectors in the Indian economy. These sectors have particularly witnessed a massive growth in the last 2 decades with a spurt of fashion design schools in India. According to the India Brand Equity Foundation, India is the world’s second-largest exporter of textiles and apparel. The textile industry contributes about seven per cent to the industrial output, two per cent to the GDP and fifteen per cent to the country’s total export earnings. Despite its immense and valuable contribution, the fashion industry is fraught with issues of rampant counterfeiting and knock-off culture. While it is often said that ‘imitation is the highest form of flattery’ the same doesn’t quite apply to the fashion world since the cheap and widely circulated imitations only water down the designers’ creative efforts and pursuit of exclusivity.

Given this scenario, putting in place a sound IP strategy can protect fashion designs from exploitation by others. Even though the fashion industry involves various form of IP, viz. trade marks, registered designs, copyright, know-how, etc., from a purely creative viewpoint, copyright and design law assume primary significance. The question that has often plagued the fashion industry is the appropriate means of IP protection for fashion designs, viz. whether it is copyright law or design law.

Nature of protection and relevant provisions under The Copyright Act, 1957 (Copyright Act) and The Designs Act, 2000 (Designs Act)

Section 2(c) of the Copyright Act defines ‘artistic work’ to mean:

 (i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality;

(ii) a [work of architecture]; and [work of architecture]; and”

(iii) any other work of artistic craftsmanship;

Since the definition of artistic works under the Copyright Act has a wide connotation, even an abstract work, such as a few lines or curves arbitrarily drawn would qualify as an artistic work. Given this, fashion designs are as such capable of being protected under the Copyright Act if they qualify as original works of art.

It is pertinent to draw attention to a specific provision under the Copyright Act, viz. Section 15 which sets out the interplay between the Copyright Act and the Design Act and is often touted as a contentious provision. This provision reads as follows:

15. Special provision regarding Copyright in designs registered or Capable of being registered under the 1*** 2[Designs Act, 2000 (16 of 2000)].–(1) Copyright shall not subsist under this Act in any design which is registered under the [Designs Act, 2000 (16 of 2000)].

 (2) Copyright in any design, which is capable of being registered under the [Designs Act, 2000 (16 of 2000)] but which has not been so registered, shall cease as soon as any article to which the design has been applied has been reproduced more than fifty times by an industrial process by the owner of the copyright or, with his licence, by any other person.

Reference should also be drawn towards Section 2(d) of the Designs Act which defines ‘design’ as:

“…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 (43 of 1958) or property mark as defined in section 479 of the Indian Penal Code (45 of 1860) or any artistic work as defined in clause (c) of section 2 of the Copyright Act, 1957 (14 of 1957); (emphasis added)

A composite reading of the aforementioned statutory provisions provides us with an interesting situation. Let’s suppose we have a painting which is an original artistic work. While creating an article from the painting in question, the design of the painting will have to undergo some modification to be used as a printable design on an article (such as a garment), where the final output should have some visual appeal. The harmonising effect of the Copyright Act and the Design Act would result in an interpretation that while the painting being an original artistic work would enjoy copyright protection (viz. during the life of the copyright-owner and for 60 years thereafter), the modified derivative that is applied (by an industrial process) on an article will lose copyright protection upon production of the 51st unit. Further, if the same has not been registered under the Designs Act, it becomes a ‘free’ design, which is neither protected under Copyright law nor under Designs law.

Though the provisions under these two laws are in fact still a subject matter of unsettled debate, the Indian judiciary has tried to tackle this issue by a harmonious reading of the said provisions.

Judicial interpretation

The most prominent case with respect to interpretation of Section 15 of the Copyright Act is that of Microfibres Inc. and Ors. Vs. Girdhar and Co. and Ors. [2009 (40) PTC 519 (Del)]. In this case, both parties were engaged in the business of upholstery fabrics. The Plaintiff-Appellant alleged infringement of its copyright in the artistic works applied to upholstery fabrics by the Defendant-Respondent. The Defendant-Respondent on the other hand claimed that the designs in respect of which the plaintiff claimed proprietary right were a subject matter of the Designs Act and not the Copyright Act. Accordingly, in absence of registration under the Designs Act, the designs were in public domain with the production of 51st unit by the Plaintiff-Appellant.

In appeal, the grievance of the Plaintiff-Appellant arose from the premise that the learned Single Judge held that the designs in question were capable of being registered under the Designs Act and the Appellant was not entitled to seek protection under the copyright law.

The Division Bench of Delhi High Court while dismissing the appeal arrived at the following important findings:

“…the interpretations canvassed by the appellant would, render the design legislation otiose, because every registered design would then be able to trace its origin to a chart, drawing, diagram etc. and consequently also claim copyright protection under the Copyright Act in addition to the protection as a registered design under the Designs Act.

e. A perusal of the Copyright Act and the Designs Act and indeed the Preamble and the Statement of Objects and Reasons of the Designs Act makes it clear that the legislative intent was to grant a higher protection to pure original artistic works such as paintings, sculptures etc and lesser protection to design activity which is commercial in nature…

 f. The original paintings/artistic works which may be used to industrially produce the designed article 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 as evident from the definition of the design under Section 2(d) of the Designs Act. However, the intention of producing the artistic work is not relevant.

i. If the design is registered under the Designs Act, the Design would lose its copyright protection under the Copyright Act. If it is a design registrable under the Designs Act but has not so been registered, the Design would continue to enjoy copyright protection under the Act so long as the threshold limit of its application on an article by an industrial process for more than 50 times is reached. But once that limit is crossed, it would lose its copyright protection under the Copyright Act. This interpretation would harmonize the Copyright and the Designs Act in accordance with the legislative intent.” (emphasis added)

It is pertinent to note that prior to the Microfibres case, the judiciary had adopted a slightly different approach in the case of Rajesh Masrani vs. Tahiliani Design Pvt. Ltd. [2009 (39) PTC 21 (Del)]. In this case, the Court while referring to the patterns printed or embroidered by the Plaintiff on a fabric as original artistic works held that such works were also entitled for protection under Section 2(c) of the Copyright Act. In this case the Plaintiff contended that the drawings which were made in the course of developing garments and accessories were artistic works under Section 2(i)(c) of the Copyright Act. The patterns printed and embroidered on the fabric were also alleged to be artistic works, as were the garments finally designed. The Plaintiff alleged infringement of copyright in these various artistic works. The Division Bench of the Delhi High Court injuncted the infringing activity and held that:

“In the present case, as per the pleadings, the work in question has not been reproduced more than 50 times by an industrial process by the plaintiff…”

We are, therefore, of the opinion that the plaintiffs’ work is entitled for protection under Section 2(c) of the Copyright Act and is an original artistic work. Since the work is an ‘artistic work’ which is not covered under Section 2(d) of the Designs Act, 2000, it is not capable of being registered under the Designs Act and the provisions of Section 15(2) is not applicable.

In another relatively recent case of Ritika Private Ltd. vs. Biba Apparels Private Ltd. [230 (2016) DLT 109], a leading fashion label (Ritu Kumar) accused a rival company of imitation of its fashion designs and claimed copyright in various drawings and sketches which were created by the plaintiff for dresses being sold by them. The Plaintiff contended that copyright continues to exist in a sketch or a design of a dress. It was argued by the Plaintiff that although the said sketch, drawing or design is capable of being registered as a design inasmuch as the drawing, sketch or design which is the subject matter of Section 2(c) of the Copyright Act is not a design because it is excluded from the definition of design under the Designs Act. The Defendant urged for seeking dismissal of the suit in light of provision of Section 15(2) of the Copyright Act. The Delhi High Court decided the case in favour of the Plaintiff largely following the Microfibres Inc. case and held that:

“…that once a drawing, a sketch or a design is used for creation of dresses, then, once the dresses cross 50 numbers, no copyright can subsist in the drawing and sketch under the Indian Copyright Act because of the language of Section 15(2) of the Indian Copyright Act.”.

CONCLUSION

Even though Section 15(2) of the Copyright Act still appears to be open to various interpretations,  the current position is that designs capable of being registered under the Designs Act, but not so registered, as soon as are applied more than 50 times by industrial process by the owner of the copyright or his licensee, the copyright in a design shall cease under the Copyright Act as well as the Design Act.

For fashion designers it is important to obtain adequate protection for their artistic works (which have to be applied by industrial process on article) under the Designs Act. An example of sound IP strategy with respect to fashion designs can be seen in the very recent case of House Of Anita Dongre Private Limited vs. Vikram Phoolwani [CS(COMM) 63/2020] where renowned designer Anita Dongre moved the Delhi High Court against infringement of her registered designs. The infringers were renowned textile house from Jaipur having stores in Delhi as well. The designer was successful in obtaining ex–parte ad interim injunction order from the Delhi High Court restraining them from manufacturing or dealing in any kind of garment, lehenga, etc. based on its design registrations and pro-active enforcement efforts. An important factor for designers to keep in mind is that for designs to be registered under the Designs Act, the designs should be novel and there should not be prior public disclosure of the designs before applying for registration of the design.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

FLIPKART declared a well-known trade mark by Madras HC

In the matter of Flipkart Internet Private Limited v. Somasundaram Ramkumar [C.S.No.848 of 2017], the Madras High Court in its Order dated September 13, 2019, granted a permanent injunction in favour of the Plaintiff, restraining the Defendant from using the trademark FLIPPINGKART.

The Plaintiff is an e-commerce company operating through the website www.flipkart.com. The Plaintiff is the registered proprietor of the trademarks FLIPKART, FLIPCART and FLIPKART.COM in classes 02, 03, 05, 06, 07, 10, 12, 14, 15, 16, 18, 20, 21, 26, 35, 38, 41, 42 & 45. The Plaintiff also claims ownership of copyright in the artistic works as set out below –

It was the Plaintiff’s case that that Defendant had unauthorizedly registered a website www.FlippingKart.com in May 2017 to encash upon the reputation and goodwill earned by the Plaintiff amongst the general public in its prior registered trademark “FLIPKART”, and with the intent of passing off its goods and services as that of the Plaintiff. Further, the Defendant also filed an application for registration of the trademark FLIPPINGKART in CLASS 38.  The Plaintiff alleged that the Defendant’s usage of the FLIPPINGKART amounted to infringement and passing off if its trademark FLIPKART.  

In its ex-parte judgement, the Court was of the view that “the Defendant had adopted the registered trademark of the Plaintiff only with a mala fide intention to spoil the immense goodwill and reputation earned by the Plaintiff among the consumers/general public and therefore, the same would not only amounts to infringement of the Plaintiff’s registered trademark, “FLIPKART”, but also it would amounts to passing off their goods or business or services as those of Plaintiff.”  The court also allowed the Plaintiff’s prayer to declare its trademark FLIPKART as a well-known trade mark.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

PANCHARISHTA’ not a generic word in respect of Ayurvedic medicinal preparations

In the matter of Emami Limited v. Shree Baidyaraj Ayurved Bhawan Private Limited [CS (COMM) 275/2019], the Delhi High Court, vide its Order dated August 26, 2019, granted a temporary injunction in favour of the Plaintiff, restraining the Defendant from using the trademark PANCHARISHTA in respect of Ayurvedic medicinal preparations. The Plaintiff had filed the suit seeking a permanent injunction restraining infringement of its mark ZANDU PANCHARISHTA, passing off, and other reliefs.

The Plaintiff submitted that the product ZANDU PANCHARISHTA – an ayurvedic digestive tonic – was launched in the year 1968 by its predecessor-in-interest. The Plaintiff placed reliance on its trademark registrations for the ZANDU PANCHARISHTA label since 1986, and the word marks ZANDU PANCHARISHTA and ZANDU PANCHARISHTA PLUS since 2010 and 2014, respectively (both claiming prior use since 1968). The Plaintiff contended that the Defendant’s product, launched in 2019 under the name PANCHARISHTA infringed the Plaintiff’s long-standing statutory rights in its registered trademarks. 

The Defendant argued that as per Ayurvedic texts, the word “Arishta” means a drug prepared using water and therefore, no monopoly can be granted over it in respect of an Ayurvedic preparation. The Plaintiff countered by submitting that though the word PANCHARISHTA may be derived from the word Arishta, it has acquired a secondary meaning due to long usage and has therefore acquired distinctiveness. The Plaintiff further argued that PANCHARISHTA is a unique and coined combination of the number 5 (in Devanagari script) and Arishta. In support of this the Plaintiff also submitted an affidavit of an ayurvedic expert, who stated therein that …“Pancharishta” is a proprietary medicine and its formulation is prepared by Research department of the Plaintiff Company. Ayurvedic text books have no reference of the word “Pancharishta” anywhere.”

The Court held that while no monopoly can be exercised over Arishta in respect of Ayurvedic preparations, PANCHARISHTA is not a generic word as it does not exist in Ayurvedic literature and has, in fact, been coined by the Plaintiff. The Court also observed that owing to over fifty years of use, the PANCHARISHTA mark has come to be associated exclusively with the Plaintiff. Placing reliance on the judgment in Cadila Health Care (2001 5 SCC 73), the Court held that a stringent test for determining the likelihood of deception and confusion would be applicable in this case. The Court held that “the consumers may purchase the Defendant’s products simply presuming that because of the use of the word PANCHARISHTA in both products, Plaintiff and the Defendant’s products are one and the same or have the same therapeutic effect.”

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

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