"Behind every new design is a desire to break new ground, to improve and to enhance consumer experience. Good design makes products easier, more comfortable and safer to use." Francis Gurry, Former Director General, World Intellectual Property Organization (WIPO)
India is among the world's largest producers and the sixth-largest exporter of Textiles and Apparel ("T&A"). The domestic T&A market is expected to be valued at>US$ 209 billion by 2029.1 Also, the industry contributes 2.3% to the Indian Gross Domestic Product (GDP), 12% to the export revenues, and accounts for nearly 13% share of the nation's total industrial production.2 According to a press release by the Ministry of Textiles, Government of India, export in the textile sector increased by 41% from April to December 2021 compared to the previous year.3 FDI in the T&A industry has also reached US$3.75 billion through March 2021.4 Such data depicts that the Indian T&A industry holds enormous potential, which should be maximized through modern technology, infrastructural development, and, most importantly, by protecting continuous innovations and creations.
The T&A industry is centered around fashion. Each season brings new fashion and style with new fabrics and designs. Each novel and/or original design comprises a significant investment of money, time, and brainpower of the designers who contributes to the development and growth of the T&A industry. Thus, the protection of such industrial designs (commonly called "designs") is relevant to the T&A industry. Under the Design Act, 2000 (the "Design Act"), design protection grants an exclusive & monopolistic intellectual property right to create, sell, and use goods/articles to which a design is applied. Protection rights are granted for an initial ten years, which is extendible to the next five years on request. According to the Annual Report 2019-20 released by the office of the Controller General of Patents Designs, Trademarks and Geographical Indications,14290 Design applications were filed during the year, indicating a significant increase of 13.55% from the previous year. It is also interesting to note that the 9706 design applications originating from India contributed to 68% of the total filing. Out of these Indian applications, the highest number of applications were filed in Class 02 for Articles of clothing & haberdashery, amounting to 1275. In addition, 591 applications were filed in Class 05 for Textile piece goods, artificial and natural sheet material, respectively.
Sabyasachi Couture (571), Relaxo Footwears Ltd. (216), and Siddhi Vinayak Knots & Prints Pvt. Ltd. (210) stood as the top three Indian filers in the country.5 By registering a design, the owner can prevent unauthorized users from commercializing the protected design comprising aesthetically unique shape, configurations, ornamental or exquisite features, patterns whether it is three-dimension (3D) two-dimension (2D) features such as garments, artistically graceful textile prints comprising the different composition of lines, or colours, or combinations thereof.6
Although a significant increment in design applications is seen, however, considering the gigantic domestic T&A industry and its immense potential, the scope of increasing the number of design protection is relatively high compared to present filings. Design registration is generally seen as a cumbersome process, and designers think of it as an additional financial burden. Despite the designers' substantial investment, there are instances where they rarely use design legislation to register and protect their creativity. But busting the myth and the truth to be told, given the domestic resources invested in developing a novel design, the design protection is essential, cost-effective, and not a financial burden. The design registration system is time-bound and quickest in India among all intellectual property registration procedures.
Whether To Register Textile Design Under Copyright Or Design Act?
The next challenge for the designers is to determine whether designs come under the purview of protection offered by the Copyright or Design Act. Under the Copyright Act, 1957 (the "Copyright Act"), the artistic work related to printings/designs/patterns etched or imprinted on textiles/fabrics/apparel/garments are protected.
Whereas the printings/designs/patterns on textiles/fabrics/apparel/garments including finished haute-couture, designed garments, and designer prints are required to be registered under the Design Act.
Design of "artistic" nature is excluded from design protection given by the Design Act and further granted protection under the Copyright Act. While section 2(d) of the Design Act expands on the term "design," it excludes any "artistic work" as defined in section 2(c) of the Copyright Act.7 Such an existing overlap is addressed in section 15 of the Copyright Act. As per the section, copyright does not exist in a design that has been registered under the Design Act. As a result, when a design is registered under the Design Act, the design owner is relinquished from the rights given by the Copyright Act. Further, when a design is capable of registration under the Design Act but not so registered, then the available copyright protection ceases as soon as the article on which design is applied has been produced more than fifty times by an industrial process.
In an appeal, the landmark judgment Rajesh Masrani v. Tahiliani Design Pvt. Ltd clarified the stance that under section 15(1) of the Copyright Act. The Plaintiff, Tahiliani Design Pvt. Ltd, sought a decree of permanent injunction alleged that the drawings, patterns printed or embroidered on the fabric, and garments or accessories are the artistic works under Section 2(c)(i) of the Copyright Act and artistic craftsmanship under Section 2(c)(iii) of the Copyright Act respectively. Plaintiff was granted an ex parte ad interim injunction order against Defendant, Rajesh Masrani, who subsequently filed the present appeal against this order. The High Court of Delhi (Court) addressed the question of whether designs printed on fabrics qualified as 'artistic works'; and whether they can be protected under the Copyright Act and/or the Design Act. The primary contention of Defendant was that the printed garments and drawings on textiles were not 'artistic work' for copyright purposes but actually 'design'; secondly, in light of section 15 of the Copyright Act, no copyright exists in any design which is capable of registration under the Design Act. Plaintiff contended that the design in question was original and contained creative inputs and had only been produced 20 times under the supervision and leadership of the designer. While observing the number of articles printed, the Court ruled that as per section 15(2) of the Copyright Act if an article is reproduced more than 50 times by an industrial process, copyright protection for the article is immediately terminated. It observed that the Plaintiff's drawings on the textiles are undeniably 'artistic work' that meet the requirements for a copyrightable subject matter, i.e., the matter must be original as well as encompass some creativity, labour, capital, skill, and so on to be protected under the Copyright Act.
Furthermore, the Court stated that uniqueness in conceptualization and creation and presentation is a sine qua non of haute couture. The Court said that it was for this reason that the Legislature decided to exclude the 'artistic work' from the concept of 'design' under the scheme of the Design Act and emphasized it under section 15 of the Copyright Act. Relying on several precedents, the Court further reiterated that registration of the work under the Copyright Act is not required, and registration is not a prerequisite for pursuing a claim for damages for copyright infringement.
The cross reading of these terms from two Acts defines the intellectual property boundaries, excluding artistic work from the design protection. To safeguard against infringement, design applied on the article is required to be protected and registered under the Design Act.8 However, it is pertinent to mention that the argument, i.e., whether to register a new design under the Copyright or Design Act, has to be considered case-by-case, keeping the above precedent in mind.
Creating a Strategy for Design: Striking a Balance Between Breadth and Strength for Best Protection
The most pivotal step is creating a design registration strategy that strikes a balance between breadth and strength to provide designers with the most comprehensive protection available. Its statement of novelty defines the scope of a registered design read with the disclaimers filed along with the application. A novelty statement is a statement about the graphics/representations/visuals of an article to which a design is applied that displays the features of the representations/graphics/visuals for which novelty and/or originality is claimed. The visuals must indicate a single design with a single scope. After examination, the applicant can make further amends as directed by the Controller.
While seeking design protection for a novel creation, there is a need to carefully consider which element is required to be registered to strike a balance between these two objectives. This implies that one risks getting objection if the scope is too broad, whereas, if it is too narrow, infringers will be able to build around the protection. For example, a designer seeks design protection for a customized garment with specific original patterns uniquely embossed onto it. Now, the critical aspect is to decide whether to register the whole new garment, the original uniquely embossed design, or both in an appropriate class. What part of the spectrum is best for the creation?
If there is a sole concern about basic knockoffs that look exactly like the creation, a single design filing in one class would be enough. However, if the concern is for broader protection, such as to prevent someone from capturing the essence of the creation without copying every element, in that case, one needs to file applicants in appropriate classes for the most eccentric part of the design.
This allows the individual to aspire for broader protection while lowering the scope of the risk by having alternative designs such as alternative colour schemes/patterns/shapes or a different registration strategy in the most appropriate class/classes. It helps build a protective thicket around the design, capturing various essential design elements.
A Way Forward
Since the Indian T&A industry, along with the designers like Sabyasachi Mukherjee acclaimed global fame, design registration and protection has become critical as it is the main pillar beholding the success of the industry and allowing it to expand into other international markets through different intellectual property commercializing tools like licensing, franchising, contractual agreements, etc. Design piracy, blatant rip, and abuse of rights by unscrupulous competitors weigh heavily on the rising fashion designer wear companies. Unauthorized appropriation, exploitation, and utilization of registered designs on the article must consequently be curtailed and minimized by regulations. The T&A industry's innovation and intellectual capital will dwindle unless IP assets are appropriately monitored, which would help commercialize novel aesthetic creations and limit the risk of infringing on others' intellectual property rights.
6. The Design Act, 2000.
7. Rajesh Masrani v. Tahiliani Design Pvt. Ltd., 2008 SCC OnLine Del 1283
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.