INTELLECTUAL PROPERTY AND FASHION: HOW TO PROTECT YOUR DESIGNS FROM COUNTERFEITING AND COPYING

AUTHOR: DIYA PRADEEP, STUDENT, B.A.LL.B

Abstract

The fashion industry is characterized by its reliance on creativity and innovation, yet it is significantly impacted by the widespread challenges of counterfeiting and copying. Intellectual Property (IP) laws are essential for safeguarding the distinctive designs and creations of fashion brands. The innovative efforts of designers necessitate protection against unauthorized use, which is where Intellectual Property (IP) laws in the Fashion Industry play a crucial role in safeguarding their work. India, characterized by its rich diversity, has established a comprehensive framework aimed at protecting these valuable assets. Nevertheless, the existing legal framework poses difficulties in providing effective protection for fashion products. This research paper investigates the relationship between IP rights and the fashion sector, with a particular emphasis on the sufficiency of current legal protections against counterfeiting. 

Introduction

The fashion industry is a dynamic sector marked by its rapid evolution and a persistent demand for fresh and innovative designs. While it plays a crucial role in the global economy, the industry is continually challenged by the threats of counterfeiting and copying. The unauthorized replication of fashion products not only diminishes the originality of designers but also leads to significant financial detriment for legitimate enterprises. Intellectual Property (IP) law, which includes trademarks, copyrights, patents, and design rights, functions as the main legal framework for safeguarding original fashion creations.

However, despite the availability of these IP protections, numerous fashion designers encounter challenges in protecting their work due to the distinctive characteristics of the industry. The rise of fast fashion, the expansion of digital commerce, and the complexities of global supply chains have intensified the ease with which counterfeit goods can spread. This research aims to evaluate the effectiveness of IP law in protecting fashion designs and investigates how designers can utilize existing legal structures to reduce the effects of counterfeiting and copying. 

Literature Review

A significant body of research has delved into the relationship between intellectual property law and the fashion industry. Scholars such as Susan Scafidi (2005) and Kal Raustiala & Christopher Sprigman (2012) argue that fashion operates under a “low IP equilibrium,” wherein the industry’s reliance on trends diminishes the need for strict legal protections. However, others, like C. Scott Hemphill and Jeannie Suk (2009), contend that robust IP protection is necessary to foster innovation and incentivize designers. Numerous studies highlight the shortcomings of conventional intellectual property mechanisms within the fashion industry. For example, while trademark law effectively combats counterfeit branding, it does not extend protection to unbranded designs. Although copyright law may safeguard certain artistic features, it typically excludes the functional elements of apparel from its purview. Design patents provide a form of protection; however, they are often deemed too slow and expensive to keep pace with the fast-evolving nature of fashion cycles. Approaches to fashion design protection on an international scale differ significantly, with the European Union offering unregistered Community design rights as a more adaptable option, whereas the United States employs a fragmented system of intellectual property protections. This literature review underscores the necessity for a more unified and fashion-oriented intellectual property framework to tackle the distinct challenges faced by the industry.

Legal Analysis 

The IPR Regime in India provides protection to the fashion design under three legislations i.e. The Designs Act, 2000, The Indian Copyright Act, 1957, The Trademarks Act, 1999 and GI Act, 1999. From the perspective of Fashion Industry, the Acts do not protect the entire garment as a whole; rather it protects the particular/individual aspects like shape, pattern, colour etc. of the garment. 

1. Protection under Design Act:

The Designs Act exclusively safeguards registered designs, leaving unregistered designs without protection. Consequently, fashion designers who have not formally registered their designs are unable to benefit from the provisions of the Act. It is important to highlight that a fashion design, which may also serve as a trademark, does not receive protection under the Designs Act.

Additionally, the Designs Act 2000 is structured to protect the non-functional aspects of an object that possess visual appeal. This includes designs characterized by features such as shape, configuration, patterns, ornaments, or compositions of lines or colors applied to either two-dimensional or three-dimensional forms. The rights associated with such designs are valid for a duration of ten years, with the possibility of extension under certain conditions, allowing for a total protection period of up to 15 years.

According to Section 22 of the Designs Act, in instances of infringement of a registered design, the infringer is liable to compensate the registered proprietor with an amount not exceeding Rs25,000 ($451), which can be recovered as a contract debt. Should the proprietor choose to initiate legal action for damages resulting from any violation of their rights, they may be awarded damages and the infringer may be subject to an injunction to prevent further violations.

The design registration process in India is efficient and among the quickest of all intellectual property registration methods. Furthermore, considering the resources dedicated to developing a new design, the registration process is both economical and cost-effective. Once a design is registered, the proprietor enjoys exclusive rights not only against direct copies of the protected design but also against products that are substantially similar.

2. Protection under Copyright Act:

The Copyright Act and the Designs Act intersect regarding the protection of designs. A fashion design may receive copyright protection under the following conditions:

• A fashion design that can be registered as a “design” under the Designs Act, 2000, and is duly registered according to the provisions of that Act will only receive copyright protection under the Designs Act. In this case, the copyright for the registered fashion design will last for a maximum of fifteen years.
• Additionally, a fashion design that is eligible for registration as a “design” under the Designs Act, 2000, but has not been registered, will be protected under the Copyright Act, 1957. In this context, copyright for the fashion design will remain in effect until the fiftieth reproduction of the article to which the design has been applied through an industrial process.
• A fashion design that qualifies as an original artistic work and is therefore not eligible for registration as a “design” under the Designs Act, 2000, will be granted copyright protection as an original artistic work under the Copyright Act, 1957. Copyright for such original artistic works automatically exists upon creation and lasts for the lifetime of the author plus sixty years if published during the author’s lifetime.

Section 15 of the Copyright Act outlines specific provisions indicating that copyright does not apply to any design that is registered or can be registered under the Designs Act. An important aspect of this provision is that copyright in the design will terminate once any article to which the design has been applied is reproduced more than fifty times through an industrial process by the copyright owner or with their permission by another party. This clause limits the inherent protection that copyright typically provides to creators simply by virtue of their creation.

In contrast, original artistic works, as opposed to applied artistic works such as designs, will continue to be protected under the relevant provisions. Hence, a fashion designer seeking to protect his/her creations under the Copyright Act, 1957,needs to prove:

1) that his/her creation is an “original artistic work” within the meaning of the Copyright Act, 1957 and is not a “design” within the meaning of the Designs Act, 2000; and 

2) that the article (e.g. garment),to which the design derived from the creation has been applied, has not been reproduced more than fifty times by an industrial process by the owner of the copyright or, with his license, by any other person. 

3. Protection under Trade mark Act:

A trademark serves a valuable purpose for a fashion design primarily when it is visibly embedded within the design to the degree that it constitutes a component of the overall aesthetic. There is an increasing trend among fashion designers to feature a trademarked logo prominently on the exterior of garments during the creation of clothing and accessory designs. In such cases, the logo is integrated into the design, thereby granting substantial protection against unauthorized replication of the design. Additionally, brand names themselves are also eligible for protection under the Trade Marks Act of 1999.

4. Protection under Geographical Indications Act, 1999:

The Fourth Schedule of the Geographical Indications Act outlines a classification of goods that are eligible for protection under the Act. The registration of geographical indications clearly illustrates the safeguarding of fashion apparel, particularly concerning the texture and artistic qualities of the fabrics utilized in the creation of garments and accessories. To date, approximately 15 types of geographical indications have been registered for textiles in India, including Kasuti embroidery from Karnataka, Kutch embroidery from Gujarat, and Sujini embroidery from Bihar, among others.

Conclusion

The fashion industry is persistently facing the issues of counterfeiting and copying, which pose significant risks to both the financial viability of businesses and the innovative essence of designers. While intellectual property law offers a basis for safeguarding fashion creations, it inadequately addresses the distinctive aspects of the industry. The current legal structure, characterized by fragmented protections and protracted procedures, does not align with the rapid pace of fashion. To enhance the protection of designs against unauthorized duplication, the industry should consider implementing more adaptable, fashion-oriented legal frameworks and leveraging technological innovations such as blockchain. Future investigations should prioritize legislative changes and creative enforcement strategies that are compatible with the digital era and the international scope of fashion trade.

References

1. Moni Omotoso, How to Protect Your Designs From Being Copied, FASHION INSIDERS, (Feb.13,2023), https://fashioninsiders.co/toolkit/legal-corner/how-to-protect-your-designs-from-being-copied/
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