The fashion sector is one of the many renounced industries in the modern world; fresh minds produce innovative designs which are the products of their original ideas. But what if one’s original ideas are stolen, rendering the labor of those who created them useless? Intellectual Property Rights are granted to those who create and come up with such original ideas in order to prevent such ideas from being copied. In India, various statutory laws such as the Copyright act 1957, Design Act 2000, and Trademarks Act 1999 protect the Intellectual Property Rights¹ of an individual under the fashion industry and the following shall be discussed thoroughly in this article.

Definition: Intellectual Property Rights

An intellectual property right (IPR), according to the Black Law Dictionary, is “a commercially valuable product of the human intellect, in a concrete or abstract form, such as a copyrightable work, a protectable trademark, a patentable invention, or a trade secret.”

The creation of designs using human intelligence that are employed as marketable goods falls under the purview of IPR and is protected by laws pertaining to copyright, trademark, and patent rights. The Universal Declaration of Human Rights², protecting the artistic, literary, or scientific production of the creator/author, because it is a right that is necessary for the development of new inventions and the flow of new ideas for the welfare and improvement of society as a whole.

IPR are safeguarded in India by a number of statutory laws, including the Copyright Act of 1957, the Patents Act of 1970, the Trademarks Act of 1999, the Designs Act of 2000, etc.

1. Further be referred to as IPR.
2. Supra., Art.27. https://www.un.org/en/about-us/universal-declaration-of-human-rights

All of these legal provisions aid in protecting intellectual property and offering remedies in cases of infringement. The IPR under the fashion industry are majorly protected under The Trademarks Act 1999, The Copyright Act 1957, and The Design Act 2000.

The Trademarks Act 1999

A trademark is “a mark capable of being depicted graphically and competent of determining one person’s products or services from those of another, and may contain structure of goods, wrapping, and colour combination³.”

In its essence, a trademark is a logo or mark that aids in identifying the creator’s work or product and sets it apart from those of other creators working in a related field. In the highly competitive fashion industry, brands like Ralph Lauren and Calvin Klein utilize their brand value, so trademark registration is of utmost importance. Trademarks play a significant role in helping to distinguish one designer’s designs and styles from another and in providing protection from counterfeiting.

Given how prevalent fashion piracy is in the industry, trademarks assist different brands in attracting customers and generating revenue through the intellectual property they developed by putting their creative talents to use. It also assists consumers in telling the difference between authentic brands and knockoffs.

In case of trademark infringement sections 103 and 104⁴ can be invoked providing for imprisonment for a period of not less than 6 months and may extend up to 3 years, as well as a fine of not less than 50,000 rupees and may extend up to 2 lakh rupees. And under Section 115(4) of the Act police has powers for the process of search and seize of any material that calls for action against trademark infringement. Until raiding in case of infringement, the police officer or any other authority must obey norms and regulations of the Registrar’s opinion.

• Sect. 2(1)(zb),The Trademarks Act, 1999, No. 47, Acts of Parliament,1999(India)
• The Trademark Act, 1999, No. 47, Acts of Parliament,1999(India)

Color as trademark

Colors have played a significant role in providing recognition to a particular brand, in fact, most of the consumers recognize the brands they prefer through the significant color utilized in the brand’s logo, for instance: Cadbury, the Black and Decker corporation, Ferrari red, tiffiny & co., etc. Although there is a high possibility of a controversy arising regarding the usage of a single color or color combination being used a trademark.  

One of the most significant questions regarding such controversy was raised in the landmark case of Christian Louboutin V. Yves Saint Laurent⁵: The petitioner Christian Louboutin, a French fashion designer whose shoes were significantly recognized by their distinct red color was provided the trademark in January 2008. In 2011 YSL marketed a red monochromatic red shoe with a red sole. It was considered an infringement of the trademark granted to Louboutin’s red sole shoes.

The Court recognized the trademark protection provided to the designer for the utilization of contrasting red lacquered outsoles. It was stated that if the single color acted as a symbol of recognition for a firm’s goods, then the color can be protected under trademark as it has a distinctive value. The red sole provided that distinctive value to the firm’s goods, henceforth it was protected under the Lanham Act⁶.

Position of color Trademarks in India

The Trademarks Act of 1999 states that a color combination can be registered as a trademark⁷. The statute, however, is ambiguous regarding whether or not a single color qualifies as a trademark. It has been stated in the draft trade manual, distinctive color combinations that are simple to distinguish from products and services of other brands can be used as a trademark with different color combinations⁸.

• Christian Louboutin V. Yves Saint Laurent America Holding Inc.,696, F.3d 206 (2012).
•  The Lanham Act, 15 U.S.C. § 1051 et seq.
• Sect. 10, The Trademarks Act, 1999, No. 47, Acts of Parliament,1999(India).
• Draft Manual of Trade Marks, Ch. 3, 3.2.4, pg. 82

However, regarding a single color the draft trade manual specifies that it can be registered as a trademark for a certain brand if it is sufficiently distinctive, unusual, and aids consumers and merchants in differentiating one brand’s products from another⁹.

Thus, only under exceptional circumstances Registration of a single color as a trademark is allowed as per the marks trade registry and can sometimes be questioned under objection of section 9(1) of the Trademarks Act 1999. Certain examples of color marks registered in India are: Victorinox AG, TATA SIA Airlines ltd.

There have been, in fact, certain cases under which the issue regarding color combination being used a trademark has been addressed:

In the case of Colgate Palmolive Company v. Anchor Health and beauty care ltd.¹⁰ the court passed an injunction against the defendant from using red and white color combination of Colgate as it was distinctive and recognized by many as the plaintiff’s company. The court acknowledged the color combination as a part of trade dress.

In Deere & Co. & Anr. V. Mr. Malik Singh & ors.¹¹ The plaintiff’s green and yellow used color combination for tractors was granted a color trademark due to its distinctiveness and recognition by public at large.

The Copyright Act 1957

Copyright as explanatory from the term itself is the ‘right to copy’; Any creator who creates an original idea, art, literature etc. will have the piece of work protected under the copyright act 1957 for utilizing it for marketing purposes. It refers to the protection of legal work and the promotion of original and artistic ideas.

• Draft Manual of Trade Marks, Ch. 3, 3.2.4, pg. 82
• Colgate Palmolive Company v. Anchor Health and beauty care ltd., 2003(27) PTC 478 DEL.
• Deere & Co. & Anr. V. Mr. Malik Singh & ors. (CS (COMM) NO. 738/2018)

Under section 2(i)(c)of the Indian Copyright Act of 1957 also includes the drawings of fashion apparel in the definition of artistic works as per the verdict of the Delhi high court in 2008¹².

 A copyright exists for the lifetime of the creator and sixty years after the death of the creator¹³, it is not necessary for one to register under the copyright act to get the protection under the statute however in many cases the registration is prima facie considered evidence in case a dispute arises between the parties¹⁴.

The section 15 of the said act displays the relation between the copyright act and the design act which provides a basic function about how designer’s rights are protected in India:

1. A design which is capable of being registered under the design act is provided protection only under the said act.
2.  Designs that are capable of being registered under the design act but are not done so are protected under Section 15(2) of the copyrights act 1957.

In the case of Ritika Apparels v. Biba¹⁵ states the loopholes which effect the IPR rights of an individual in the fashion industry. The plaintiff’s work was copied by the defendant and the plaintiff filed a complaint against the defendant under the copyright act 1957 as she had not registered her work under the designs act 2000. However, the defendant stated that the plaintiff only had the right to produce the same design more than 50 under the copyright act¹⁶, since the design was not registered under the design act 2000. This affected the plaintiff severely and it depicts the requirement to make amendments in order to avoid the infringement of IP laws as much as possible.

1. Rajesh Masrani vs Tahiliani Design Pvt. Ltd., 2008,FAO (OS) No. 393/2008.
2. Sect. 22, The Copyrights Act, 1957, No. 269, Acts of Parliament,1957(India).
3. See Jishnu Guha, Note, Time for India’s Intellectual Property Regime to Grow Up, 13 CARDOZO J. INT’L & COMP. L. 225, 230 (2005) (commenting that a certificate of registration is prima facie evidence in a court of law that a party holds the copyright).
4. Ritika Apparels v. Biba, 2011, CS (OS) No. 182/ 2011, (India).
5. Sect. 15(2), The Copyrights Act, 1957, No. 269, Acts of Parliament,1957(India).

In another case of Rajesh Masrani v. Tahiliani Design Pvt. Ltd¹⁷ The plaintiff’s designs and drawings were copied by the defendant. The plaintiff filed a suit under the copyright act 1957. The court held that the plaintiff was entitled to protection under the section 2(1)(c) and under 15(2) of the said act the plaintiff had only produced the design 20 times hence he had the protection under the aforesaid sections of the act.

The Design Act 2000

Another legal instrument that provides protection to IPR of a creator in the fashion industry is the Design Act 2000. The Design Act provides protection to the shape, pattern of a dress, ornament, or accessories as long as they are original and exclusive. Unlike the copyright act 1957 one has to register one’s work in order to get protection under the mentioned act with the help of the Controller General¹⁸. Once the design is registered the creator has the protection under the act for a period of 10 years and in case of infringement of one’s right suit may be filed, providing injunction and damages to the creator¹⁹.

Still, there are certain limitations which infringes the rights of the creator even after protection provided in the aforesaid act, for instance:

1. A design which is not completely unique or original is not protected as per section 4 of the act.
2. It is further stated that if a certain design has been disclosed to the public in any manner, prior to registration shall not be allowed to be registered under the act.
3. The process of registration takes about 10-12 months but since the fashion industry in itself is extremely dynamic in nature and a collection doesn’t last more than 1 to 2 months, the process is extremely long for a dynamic industry like fashion.
4. The monetary damages which can be recovered in case of infringement of the creator’s rights is extremely less thus proving the remedy to be rather irrelevant.²⁰

1. Rajesh Masrani vs Tahiliani Design Pvt. Ltd., 2008,FAO (OS) No. 393/2008.
2. Sect. 5, The Designs Act, 2000, No. 16, Acts of Parliament, 2000(India).
3. Sect. 11, The Designs Act, 2000, No. 16, Acts of Parliament, 2000(India).
4. Sect. 11, The Designs Act, 2000, No. 16, Acts of Parliament, 2000(India).

In the case of Rotela Auto Components (P) Ltd. & Anr. v. Jaspal Singh & Ors.²¹ In the present case since the design has been pre-published, it was not provided protection under the design act 2000 even if the registration was of recent date, since the design has been published earlier. The ground of defence mentioned in section 19 of the designs act 2000 was taken by the defendants, pursuant to sub-section (3) of section 22 of the act. It was stated by the Hon’ble Court, “Design was a conception, suggestion or an idea of a shape and not an article. If it has already been anticipated, it is not new or original. If it has been pre-published, it cannot claim protection as a publication before registration defeats the proprietors’ rights to protection under the Designs Act, 2000. Unless the design is new and original, registration cannot be effective.”

Conclusion

Through in-depth analysis of various statutes that protect a creator’s intellectual property rights in the fashion industry it has been eventually concluded that, despite the existence of remedies, the aforementioned acts still require significant amendments to eliminate the loopholes that are restricting the industry’s designers and creators.

The fashion industry has grown to be a trillion-dollar sector that employs a sizable workforce. In order to foster original thoughts and innovations, creators’ rights must be upheld in accordance with the demands and requirements of the industry.

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Author: Chetna Parashar

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