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DESIGN PATENTS: BOON FOR FASHION

INDUSTRY

Submitted Towards Partial Evaluation of


Intellectual Property Rights
Submitted by
Shubhangi Gaur
2014-MBA- 21

Centre for Management Studies,

NALSAR university of Law


Hyderabad
Contents
Abstract...................................................................................................................... 3
Introduction................................................................................................................ 4
Design Patent in India................................................................................................. 5
Design Patent (Boon for fashion industry)..................................................................6
Legal procedure (Design Patent)................................................................................ 7
Audit in Indian fashion industry..................................................................................8
Conclusion.................................................................................................................. 9

Abstract
The fashion industry is multi billion dollar business in the world. According to
statista, the total fashion retail sales reached $755 billion in 2015. With such high
economic gains at stake it is no surprise that fashion designers, both established
and emerging, are looking for increased protection of designs. The Copyrights Act
doesnt provide designers with many rights. Compared to the United States, the
European Union provides much broader protection for original apparel designs. For
example, in 2002, the E.U. passed a law that provides designers with up to three
years of unregistered design protection and up to 25 years of registered protection.
Contrast this with the law in the United States, which lacks any law that specifically
targets fashion design protection. To bridge the gap between the lack of significant
intellectual property protection and the need for such safeguards designers are
increasingly turning to design patents to secure their rights. This paper posits that
legal protections are necessary safeguards for fashion designers against knockof
products, and it will show that design patents are not only relevant to the fashion
industry, but could provide protection for fashion products.

Introduction
When considering patents, most people think of utility patents, which are issued for
an apparatus, a process, a product, or a composition of matter. An additional patent
category, however, is the design patent, which can be extremely valuable under the
right circumstances.
A design patent may be issued for ornamental configuration, surface decoration, or
both. It must be issued for an article, however. It is also important that the design
be repeatable. For example, in a case where a company had a unique method for
applying a decorative coating to wallpaper to create a cloudy appearance, a design
patent was refused. The basis for the refusal was that the design was not
repeatable. Protecting all designs created by the process would have essentially
protected the decorating method itself. Methods cannot be protected by design
patents. The United States Patent and Trademark Office has defined the
design of an object to be the visual characteristics or aspects displayed by
the object.
To qualify for a design patent, the subject must be new in the sense that no single,
identical design exists in the prior art, it must satisfy the ornamental standards, and
it must be original to the inventor or inventors seeking protection. It must also be
unobvious on the basis of any previously existing design or combination of designs
when viewed through the eyes of a hypothetical designer skilled in the art. Further,
design patents cannot be obtained for ornamental features that are not visible when
the product is in use. In general, a design patent is obtained for the aesthetically
appealing features of a product. It has also been stated that the subject must be a
product of aesthetic skill and artistic conception. For example, one would have
difficulty obtaining a design patent for a riveting machine, as it would generally not
have aesthetic appeal. The design patent has a term of 14 years from the date it is
granted.
Design patents are an under-utilized tool in the protection of the work of fashion
designers. Although the fashion industry annually generates billions of dollars in
sales in the United States alone, many designers do not adequately protect their
intellectual property. Multiple eforts stalled in Congress, but, the growing market of
nearly-identical copied goodsknown as knockofsthreatens the authentic fashion
industry. As a result, both high-end and emerging designers sufer. While a statute
specifically protecting fashion designs does not yet exist under American law,
fashion designers can find protection under the existing laws with design patents.

Design Patent in India


It is an established fact that the fashion houses make huge investments and eforts
in creating original designs but the sad part is that the original ideas and designs
are often misappropriated by the retailers and ready-to-wear apparel makers. In
order to protect their ideas and designs, designers who wish to possess ownership
on their work usually sought legal protection by registering their designs under the
Copyright law and Designs law as they are most suited to fashion industry in India.
The discussion raises what can be protected under IP? Because of the complex and
blending nature of articles designed by fashion designers, they can be protected
under various categories of IP as follows:

The Sketch Design can be registered as artistic work under the Copyright Act
1957;

The Article Design can be well protected under the Designs Act (under class
02, 03, 05 of Third Schedule of Designs Rules, 2000);

Colour Combinations can also be protected under Copyright Act, 1957;

Fabric or any other material used in the Article can also be protected under
Designs Act, 2000 and Patents Act, 1970 (if involves inventive step and is
novel);

Logo Designs can be protected under the Trademarks Act, 1999 where logo is
part of design. For instance, Louis Vuitton handbag covered with a repeating
pattern of the brands well-known LV mark.

The idea behind seeking protection of IP is not only to protect, eforts and cost of
creating a design, but also to make a brand known and identifiable in the market
entitling it to enjoy a certain reputation among the consumers.
Of late, Indian designers have become vigilant like foreign designers in protecting
their designs and thwart attempts of copying, reproducing, printing, publishing and
distribution of prints that are colourable imitations of substantial reproduction of
designers sketch, templates, fil tracing screens etc.
One such instance is the case ofRitika Ltd v Pramod Kanodia Ltd , where the
plaintif sought permanent injunction against the defendant their respective

proprietors or partners, their officers, servants, agents and all others acting for an
on their behalf from reproducing, printing, publishing and distributing or ofering to
sell prints in any form whatsoever that are a colourable imitation or substantial
reproduction of the plaintifs drawing/sketches, templates, film tracings, screens,
engravings and/or fabric designs pertaining to Kulah, Ambi Bandhini and
Sangmarmar and/or any other prints enumerated in the plaintifs catalogue
amounting to infringement of the plaintifs copyright.
The IP for Fashion Industry in countries like USA, France is much more advanced
than India. There a fashion article can be protected under trade dress. Trade dress
is the concept originally limited to packaging of product but expanded by the courts
to include designs of the products too.
Where the protection of ideas and designs of Fashion Industry is well needed to
prevent the ever rising number of cases of infringement, there is no specific IP
protection to protect the true essence of any fashion item in India. For the time
being, better protection can be achieved by combination of two or more IPs while
seeking protection. However this approach would not render results unless people
are motivated to buy genuine fashion articles and discourage piracy.

Design Patent (Boon for fashion industry)


Thus, in current intellectual property regime, design patents provide an attractive
option for those who seek to get protection for the overall look of an object that
would otherwise not be protected by copyright or trademark law.

Speed

Design patents are much easier to obtain than utility patents. The USPTO generally
grants design patents within a year of the application date. By contrast, a utility
patent can take up to several years to be granted. This provides a great advantage
to the fast-moving pace of the fashion industry.

Secrecy

In the high-stakes world of fashion it is also very important for designers to keep
their designs under wraps until the big reveal at the major fashion shows. Design
patents are not published until they are granted which means that designers are
safeguarded from knockofs both before and after the patent is granted. Even if a
designer chooses to put their product on the market before the patent is granted,
the Patent Pending warning also deters potential counterfeiters.

Great for emerging designers

Design patents are also a boon for those who are just starting to get their footing in
the fashion industry. Unlike big name designers, which are more likely to be

protected by trademark law because of their famous brands (Gucci, Prada, Louis
Vuitton) that have acquired distinctiveness, emerging designers do not yet benefit
from the name recognition. By obtaining a design patent, an emerging designer is
assured protection of design elements for 14 years. This is important to those who
are trying to establish a brand by using the same elements in their designs in
recurring collections.

Legal procedure (Design Patent)


To apply for a design patent, the applicant must file a patent application with the
United States Patent and Trademark Office (USPTO) and pay the applicable fees.
The applicant must ensure that the application is filed within one year of: the first
printed publication depicting the design, the first ofer to sell a product covered by
the claimed design, or the first public use of a product embodied in the claimed
design. A design patent application contains only a single claim: The ornamental
design for a [insert the type of product (e.g., handbag, belt buckle, hat)], as shown
and described. The phrase as shown and described is a reference to the
specification of the design patent which includes a description of each figure in the
design patent. Thus, the scope of the claimed invention of a design patent is
defined by the drawings or photographs that depict the design to be protected.
After the application has been filed, the USPTO will examine the application to
determine if the design is ornamental (as opposed to functional), novel, and not
obvious to a designer of ordinary skill in the art. The examiner will consider the
prior art (designs that predate the design of the patent application) to evaluate if
the design in the application is novel and not an obvious variant of the past designs.
The examiner will also determine if the drawings clearly and unambiguously depict
and describe the design. If the examiner rejects or objects to the application, the
examiner will inform the applicant, who will be given an opportunity to respond and
make certain changes to the figures. If the examiner finds the application complies
with all the applicable criteria, then the application will be allowed and, provided
the applicant meets other formalities, the USPTO will issue a design patent. On
average, the USPTO issues a design patent under the regular examination
procedure in about fifteen months. But the regulations allow for an expedited
procedure in which a design patent is issued in an average of only five months.This

procedure requires that the applicant pay an additional fee, as well as conduct a
pre-examination search of the prior art. Furthermore, the applicant must comply
with shorter deadlines to respond to requests from the examiner. Finally, if the
applicant fails to follow the special procedures, then her application must wait its
turn along with the non-expedited applications. During the period when a design
patent application is pending, the applicant may choose to mark the products
patent pending on the product itself or on the sales tag affixed to the product.
There is no protection aforded by patent pending. Only after the patent issues
may the patentee sue to enforce his patent rights. The patent pending merely
deters possible copyists that a patent may issue in the future, so investment of time
and capital in the copy may not be profitable. In general, most practitioners do not
consider it difficult to acquire a design patent. Indeed, most practitioners consider it
much more like a registration process than a true examination process. In 2009, of
the 485,500 design patent applications that were filed, the USPTO granted more
than eighty percent of the applications without a single rejection. The examination
process focuses primarily on the clarity of the drawings or photographs, rather than
on the relationship of the design to the prior art. Furthermore, a well-drafted
design patent can be issued within one year of filing, even within months, if the
patentee uses the procedure available for expedited handling.

Audit in Indian fashion industry


As the Indian fashion industry gains attention from international brands and labels,
Indian fashion designers are also becoming more savvy of their legal rights to
protect their designs. Prominent Indian fashion designers have begun to take
copyright more seriously and are trying to understand the crux of the related laws.
Registering fashion designer design is still in a nascent stage. The protection of
intellectual property by the fashion fraternity was initially confined to the likes of
production houses such as Ravissant, Satya Paul and Kimaya, perhaps due to their
institutionalised set-up. Subsequently, a few designers Ritu Kumar, JJ Valaya, Abu
Jani Sandeep Khosla and Manish Malhotra set out to protect their trademarks.
Some designers who have succeeded in protecting their designs and trademarks
and have third-party battles include Ritu Kumar, Tarun Tahiliani and JJ Valaya. They
have understood the significance of registration. In many cases, designers had bad
experiences from their partners or collaborators and could not do much.
Consequently, they ventured to explore the possibility of IP protection. As time
progressed, some designers understood the distinction between copyrights,
trademarks, patents and designs and started protecting their designs. The dilemma
has always been that designers are uncertain of the monetary success of a design

and rarely do they get into a situation like Louis Vuitton or Burberry in terms of
scaling up.
The trend globally is far more aggressive as a high degree of maturity has set in
not only in awareness of intellectual property, but also with respect to the
commercial exploitation of such possibilities. Foreign designers and design houses
aggressively protect their colour, shapes, patterns, cuts, styles and insignias and
are able to convert them into efective licensing opportunities.
Foreign designers are savvy in terms of co-branding and product extensions. This is
what Indian designers are now realising. In a way, the situation is almost similar to
Hollywood vs. Bollywood where the latter is now looking up to foreign
collaborations, documentation of agreements, third-party licensing, product
endorsements etc.

Conclusion
Fashion designers are artists and entrepreneurs. Both of these identities are entitled
to intellectual property protection, just as inventors find in utility patents and
authors in copyrights. Copyright legislation for fashion design is still pending and
should it pass the new statute will take time to settle into a predictably enforceable
process. In the meantime, design patents ofer a valuable tool for the fashion
designers intellectual property toolbox. Moreover, should the copyright legislation
come to fruition, future designs will still likely find that a combination of multiple
intellectual property tools provide the best protection in the long-run. While a design
patent might not seem ideal for certain aspects of fashion design, it has many
often-overlooked advantages. In the future, savvy designers may find that strategic
design patenting could play a key role in protecting their rights and building their
brands.

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