Intellectual Property Rights Protection of Fashion Design in India

: A Panoramic View
By Shishir Tiwari*

I. Prolegomena
Fashion in India originated thousands of years ago with magnificent traditions
behind it. India has a rich and varied textile heritage where each region and state has
its own unique native costume and traditional attire and accessories. In this
globalised era, the apparel and accessory segment in India is enhancing itself at a
rapid pace with international developments. Fashion industry in India is growing day
by day and it has experienced significant expansion in the last decade mainly driven
by the growth of domestic designers, some of whom have gained international
recognition in recent years.1 The growth of the Indian fashion industry is highlighted
by the increase in the number of large fashion events (from 1 in 2004 to 5 in 2013).2
As per a study conducted by the Associated Chambers of Commerce and Industry of
India (ASSOCHAM), the domestic designer apparel industry in India, which was of
worth Rs. 720 crore and was reporting a compounded annual growth rate (CAGR) of
about 40% in 2012, is likely to cross Rs. 11,000 crore mark by 2020.3 Although, the
contribution of the Indian designer wear industry in the global market 4 is a minimal
0.32% but it is expected to reach 1.7% by 2020.

* Assistant Professor, Department of Law, North-Eastern Hill University, Shillong

793022 INDIA and Member, Asian Society of International Law; E-mail:
shishirlaw@gmail.com.
1 Grail Research (2009), The Global Fashion Industry Growth in Emerging Markets (Research
Report),
1-22,
available
at,
<http://www.grailresearch.com/pdf/ContenPodsPdf/Global_Fashion_Industry_Growth_in_Emergi
ng_Markets.pdf> (accessed on 24/12/2013), p. 16.
2 The five large Indian fashion events are as follows: (1) Indian Bridal Fashion Week, (2) Bangalore
Fashion Week, (3) Wills Lifestyle India Fashion Week, (4) Blenders Pride Indore Fashion Week & (5)
Lakme Fashion Week.
3
Indian Designer wear industry growing at CAGR of 40%, available at,
<http://www.retailangle.com/Newsdetail.asp?Newsid=3712&Newstitle=Report_%96_Indian_Design
er_wear_industry_growing_at_CAGR_of_40%> (accessed on 24/12/2013).
4 The global designer wear market is estimated at more than Rs. 2.2 lakh crores in 2012 and is said to
be growing at a compounded growth rate of 12%. By the year 2020, the industry is estimated to grow
over Rs. 6.1 lakh crores.
1|Page

On the one side, the Indian fashion industry is thriving; on the other hand it is
beleaguered by the menace of piracy in fashion design.5 The industry people,
particularly fashion designer, have been found complaining about their innovations
being imitated and copied. Fashion industry has long being known for its
omnipresent nature of copying original fashion designs and ample availability of
sophisticated software technology has made this practice of copying very easy.
Fashion design, being considered as the creation of ones intellectual innovation and
original creativity, has escalated concern and demand apropos the Intellectual
Property Rights (IPRs) Protection of fashion design. Against this backdrop, the
present paper makes a modest attempt to analyse the present IPRs regime protecting
fashion designs in India in a systematic manner. However, before delineating this, it
is pertinent to explicate in brief the notion of fashion, fashion design and fashion
design piracy as they have been used throughout this paper. Further, paper also
explores the overall arguments for IPRs protection in the fashion industry.
II. Understanding Fashion and Fashion Design
Fashion is an art, a reflection of life. It is a language of signs, symbol and
iconography that non-verbally communicate meanings about individuals and groups.
It is a mode of expressing oneself and serves as an extension of ones personality.
Fashion may vary considerably within a society according to age, social class,
generation, occupation and geography as well as over time. It changes constantly and
the changes may proceed more rapidly than in most other fields of human activity. In
common parlance, fashion refers to a popular way of dressing during a particular
time or among a particular group of people.6 However, it is more than that and is
best defined simply as the style or styles of clothing and accessories worn at any
given time by groups of people.7 It also covers in its ambit footwear and jewelleries.8

The gravity of this problem can be well understood by a statement made way back in 1993 by Naresh
Gujral. Gujral was at the helm of affairs of SPAN India, woman's clothing line and one of the larger
garment export companies in India, at that time. He said, We make Rs.30 crore a year. It would be
Rs.500
crore,
were
there
no
copies.
Cloak-and-dagger
capers,
available
at,
<http://indiatoday.intoday.in/story/fashion-piracy-design-spies-copy-outfits-for-entrepreneurs-toolazy-to-create-their-own/1/301643.html> (accessed on 24/12/2013).
6 Merriam-Webster Online: Dictionary and Thesaurus, available at, <http://www.merriamwebster.com/dictionary/fashion> (accessed on 24/12/2013).
7
Fashion
Industry,
in
Encyclopaedia
Britannica
Online,
available
at,
<http://www.britannica.com/EBchecked/topic/1706624/fashion-industry>
(accessed
on
24/12/2013).
8
To understand the various dimension of the world of fashion in detail, visit <
http://www.fashion.net/>.
5

2|Page

Fashion, in brief, refers to anything that is the current trend in look and dress up of a
person.
Fashion design is the application of design and aesthetics beauty to the items of
fashion. It is a form of art dedicated to the creation of original clothing and other
lifestyle accessories.9 Considered as principle creative element of fashion
industry10, a fashion design is influenced by cultural and social attitudes and has
varied over time and place. Modern fashion design11 is divided into three basic
categories: (1) haute couture, (2) ready-to-wear and (3) mass market.
The haute couture (made to measure) collection is dedicated to certain
customers and is custom sized to fit these customers exactly. Until 1950 fashion
clothing was designed and manufactured on Haute Couture basis. A Couture
garment was made to order for an individual customer from high quality, expensive
fabric, sewn with extreme attention to detail and finish, using time consuming
techniques. In order to qualify as a haute couture house, a designer has to be part of
the Syndical Chamber for Haute Couture12 and show a new collection twice a year
presenting a minimum of 35 different outfits each time. Ready-to-wear collections
are not made for individual customers but it is made in small quantities to guarantee
exclusivity. Clothes part of these collection are standard sized, not custom made, so
they are more suitable for large production runs. They are usually presented by
fashion houses during the fashion week. They are divided into two categories:
designer/createur and confection collections. Designer collections have a higher
quality and finish as well as an unique design. They often represent a certain
philosophy and are created to make a statement rather than for sale. Both ready-towear and haute-couture collections are presented on international catwalks. The

9What

is fashion design?, available at, < http://www.fibre2fashion.com/industryarticle/7/605/what-is-fashion-design1.asp> (accessed on 24/12/2013).

10 Kal Raustiala and Christopher Sprigman (2006), note 19, p. 1689.
11 Fashion design is generally considered to have started in 19 th century. Charles Fredrick Worth was
the first designer to have his label sewn into the garment that he created. He set up a fashion house in
Paris. It was he who started the tradition of fashion houses and telling his customers what kind of
clothing would suit them. Earlier clothing design and creation was handled by anonymous
seamstresses and high fashion was that which was worn at Royal Courts. Clothing created only after
1858 is considered as fashion design. The traditions of designers sketching out garment designs
instead of presenting completed garments on models to customers also began during this period. See
Fashion designing - the then and now, available at, < http://www.fibre2fashion.com/industryarticle/15/1482/fashion-designing-the-then-and-now1.asp> and History of fashion design, available
at, <http://en.wikipedia.org/wiki/History_of_fashion_design>.
12 Established in the year 1868, Syndical Chambers headquarter is located at Paris. For more
information about it, visit < http://www.modeaparis.com/en/federation/>.
3|Page

Mass Market caters for a wide range of customers using cheaper fabrics and simpler
production techniques.
To conclude, fashion design represents human intellect and creativity. And this
creativity comes to the fore in tangible form on the products of fashion.
III. Fashion Design Piracy
Piracy is [t]he unauthorized and illegal reproduction or distribution of materials
protected by copyright, patent, or trademark law.13 It is an act in which
unauthorized copies are made of any intellectual property. 14 In other words,
unauthorised copying is the essence of piracy. In the context of fashion industry,
piracy includes: (1) piracy in fashion design & (2) piracy in logo or label of fashion
brand. Fashion design piracy (FDP) involves unauthorised copying of original
fashion designs. And generally it falls into one of the two following categories: (1)
knockoffs & (2) counterfeits.
Knockoff is a copy or imitation of someone or something popular

15

and it is

produced illegally without a license.16 In the fashion world, a knockoff is a close copy
of the original fashion design, mimicking its elements, but is sold under a label
different from the label of the original design. Thus, it is not sold in an attempt to
pass as the original. Knockoffs are intended to replicate the original design nearly
line for line but with another designers name attached.17 A line-for-line copy is a
nearly identical imitation of an original design.
In contrast to knockoff, a counterfeit is a copy of the original fashion design as
well as brand logo or label of that design. Here, intention is to deceive buyers of the
apparels true content and origin both.18 And counterfeit apparel is sold in an attempt
Black's Law Dictionary (Ninth Edition, 2009), p. 1266.
Free Online Legal Dictionary, available at, <http://thelawdictionary.org/piracy-2/> (accessed on
24/12/2013)
15 Merriam-Webster Online: Dictionary and Thesaurus, available at, <http://www.merriamwebster.com/dictionary/knockoff> (accessed on 24/12/2013).
16 Webster's 1913 Dictionary, available at, <http://www.webster-dictionary.org/definition/knockoff>
(accessed on 24/12/2013).
17 Sara R. Ellis (2010), Copyrighting Couture: An Examination of Fashion Design Protection And Why
The DPPA And IDPPPA Are A Step Towards The Solution To Counterfeit Chic, Tennessee Law
Review, 78: 163-211, p. 168.
18 Biana Borukhovich (2008-09), Fashion Design: The Work of Art that is Still Unrecognized in the
United States, Wake Forest Intellectual Property Law Journal, 9(2): 155-176, p. 156. See also Sara R.
Ellis (2010), note 10, p. 167; Elizabeth Ferrill & Tina Tanhehco (20011), Protecting the Material
World: The Role of Design Patents In the Fashion Industry, North Carolina Journal of Law &
Technology, 12(2): 251-300, p. 254.
13

14

4|Page

to pass as the original. This situation involves piracy in fashion design besides piracy
in logo or label of fashion brand. However, all the counterfeits do not embrace this
type of blend as in some of the cases only fashion brand labels are copied. Those
cases represent purely a piracy in logo or label of fashion brand (see Figure 1).

Copying of Design and Brand

Logo Both [Counterfeits]

Design Copying
[Knockoffs]

Copying of Brand Logo

or Label
[Counterfeits]

Figure 1: Piracy in Fashion Industry

IV. Justifications for Intellectual Property Rights Protection for the
Fashion Design
As a product of human intellect and creativity, fashion design is an apt subject matter
for IPR protection without any iota of doubt. However, on the issue pertaining to the
need for fashion design protection under the IPR regime, consensus is eluding.
Conflicting views have been made on this issue as some of them validate the urgent
need for IPR protection for fashion design and, on the other hand, some does not see

5|Page

any such requirement. Examining the need for IPR protection for fashion industry in
general and fashion design in particular, plethora of articles has been written in
favour of19 as well as against20 such protection.
The opponents of IPR protection for fashion design argue that as fashion
industry is thriving, IPR protection is not necessary. Rather, they claim, absence of
IPR protection encourages fashion designer to innovate new designs which
ultimately leads to the growth of the fashion industry. In a scholarly article,
supporting this view, Rausiala and Springman21 point out to the angelic qualities of
piracy and substantiate that piracy in fashion design may indeed prove more a
boon than a bane for fashion industry.22 Elucidating it further, they write:
. . . [T]he absence of [ IPR] protection for creative designs and the regime of
free design appropriation speeds diffusion and induces more rapid
obsolescence23 of fashion designs. . . . The fashion cycle is driven faster . . . by
See, e.g., Julie P. Tsai (2005), Fashioning Protection: A Note on the Protection of Fashion Designs
in the United States, Lewis & Clark Law Review, 9(2): 447-468; Susan Scafidi (2008), F.I.T.:
Fashion As Information Technology, Syracuse Law Review, 58: 69-90; Biana Borukhovich (200809), Fashion Design: The Work of Art that is Still Unrecognized in the United States, Wake Forest
Intellectual Property Law Journal, 9(2): 155-176; C. Scott Hemphill & Jeannie Suk (2009), The Law,
Culture, and Economics of Fashion, Stanford Law Review, 61:1147-1200; Lauren Howard (2009),
An Un-Ingenious Paradox: Intellectual Property Protections for Fashion Designs, Columbia Journal
of Law & the Arts, 32(3): 333-363; Erika Myers (2009), Justice in Fashion: Cheap Chic and the
Intellectual Property Equilibrium in the United Kingdom and the United States, AIPLA Quarterly
Journal, 37(1): 47-81; N. Elizabeth Mills (2009), Intellectual Property Protection for Fashion Design:
An Overview of Existing Law and A Look Toward Proposed Legislative Changes, Shidler Journal of
Law, Commerce & Technology (now known as Washington Journal of Law, Technology & Arts),
5(5),
available
at,
<http://digital.law.washington.edu/dspacelaw/bitstream/handle/1773.1/438/vol5_no5_art24.pdf?sequence=1>; Kimberly A. Harchuck (2010),
Fashion Design Protection: The Eternal Plight of the Soft Sculpture , Akron Intellectual Property
Journal, 4: 73-118; Kristin L. Black (2010), Crimes of Fashion: Is Imitation Truly the Sincerest Form
of Flattery?, Kansas Journal of Law and Public Policy, 29(3): 505-527; Daryl Wander (2010),
Trendsetting: Emerging Opportunities for the Legal Protection of Fashion Designs, Rutgers Law
Journal, 42: 247-293; Sara R. Ellis (2010), Copyrighting Couture: An Examination of Fashion Design
Protection and Why the DPPA and IDPPPA Are a Step Towards the Solution to Counterfeit Chic,
Tennessee Law Review, 78: 163-211; Elizabeth Ferrill & Tina Tanhehco (2011), Protecting the
Material World: The Role of Design Patents in the Fashion Industry, North Carolina Journal of Law
& Technology, 12(2): 251-300; Alexandra Mackey (2012), Made in America: A Comparative Analysis
of Copyright Law Protection for Fashion Design in Asia and the United States, American University
Business Law Review, 1(2): 368-396; Jessica Rosen (2013), The Inability of Intellectual Property to
Protect the New Fashion Designer: Why the ID3PA Should Be Adopted, Golden Gate University Law
Review, 43(2): 327-353.
20 See, e.g., Kal Raustiala and Christopher Sprigman (2006), The Piracy Paradox: Innovation and
Intellectual Property in Fashion Design, Virginia Law Review, 92(8):1687-1777; Kal Raustiala &
Christopher Sprigman (2009), The Piracy Paradox Revisited, Stanford Law Review, 61(5): 12011225; Katelyn N. Andrews (2012), The Most Fascinating Kind of Art: Fashion Design Protection as a
Moral Right, N.Y.U. Journal of Intellectual Property & Entertainment Law, 2: 188-226.
21 Kal Raustiala and Christopher Sprigman (2006), note 19.
22
Shamnad Basheer (2007), The Piracy Paradox: "Fashionable" IP, available at,
<http://spicyip.com/2007/09/piracy-paradox-fashionable-ip.html> (accessed on 14/01/2014).
23 According to Rausiala and Springman, free appropriation of clothing designs contributes to more
rapid obsolescence of designs in at least two broad ways. Firstly, copying often results in the
marketing of less expensive versions, thus pricing- in consumers who otherwise would not be able to
19

6|Page

widespread design copying, because copying erodes the positional qualities of

fashion goods. Designers in turn respond to this obsolescence with new designs.
In short, piracy paradoxically benefits designers by inducing more rapid
turnover and additional sales.24
However, the views of Rausiala and Springman are far from perfect. Their whole
thesis that copying of fashion design is advantageous for the fashion industry hence
it should be allowed and IPR protection to fashion design should be avoided is
essentially based upon trickle-down theory25 of fashion change. According to them,
copying of fashion design occurs between highest to lower layers of fashion industry.
Conversely, critics are of the view that it occurs between all layers of the fashion
industry, not just from the highest to the lowest.26 Extension of IPR protection for
fashion design might not be beneficial for well-known fashion designers, but it is
certainly important for un-established designers and small business owners, who
suffer all the competition and overexposure burdens of copying without the benefit of
increased prestige.27
The proponents of IPR protection for fashion design acknowledge that fashion
industry is one of the world's most important creative industries. According to them,
designs, which are at the heart of fashion, are difficult and expensive to create, but
relatively easy and inexpensive to copy. In the absence of IPR protection, they argue,
copyists will free-ride on the efforts of creators, discouraging future investments in
new inventions and creations. In short, copying stifles innovation.28 They claim that
IPR protection for fashion designs would encourage greater innovation by ensuring
that the profits from a design went to the designer and not to those who merely
copied the work.29 The proponents of increased protection for fashion design argue
that copying technology-particularly the speed with which images of designs from
consume the design. What was elite quickly becomes mass. And secondly, many "copies" are not
point-by-point reproductions at all, but instead new garments that appropriate design elements from
the original and recast them in a derivative work. Thus, a regime of free appropriation contributes to
the rapid production of substantially new designs that were creatively inspired by the original design.
See Kal Raustiala and Christopher Sprigman (2006), note 19, p. 1722 & 1724.
24 Ibid., p. 1722.
25 As per trickle-down theory, fashion begins at the top of the class structure & spreads downward,
slowly, through the class structure.
26 Erika Myers (2009), note 19, p. 58.
27 Ibid.
28 For a detailed account of the threat to innovation posed to fashion industry by unregulated fashion
design copying on a large scale, see C. Scott Hemphill & Jeannie Suk (2009), note 19.
29 Statement of Susan Scafidi, Academic Director, Fashion Law Institute, Fordham University, at
HEARING Before The Subcommittee On Courts, The Internet, And Intellectual Property Of The
Committee On The Judiciary House Of Representatives One Hundred Ninth Congress Second
Session On H.R. 5055 on
27 July 2006 (hereinafter HEARING], available at,
<http://www.gpo.gov/fdsys/pkg/CHRG-109hhrg28908/html/CHRG-109hhrg28908.htm> (accessed
on 14/01/2014).
7|Page

runway shows can be sent around the world via the internet-has changed so
drastically in recent years that designers are suffering unprecedented harm that must
be rectified by IPR protection.

30

They maintain that IPR protection is especially

required for un-established designers and labels as copying stymies their efforts to
build a brand.31
V. Protection of Fashion Design under the Indian Intellectual Property
Rights Regime
The IPR Regime in India provides protection to the fashion design under three
different legislations, viz., the Designs Act, 2000, the Indian Copyright Act, 1957 and
the Trade Marks Act, 1999. These legal instruments can be discussed under following
heads: (1) Industrial design protection for fashion design, (2) Copyright protection
for fashion design and (3) Trademark protection for fashion design.
A. Industrial Design Protection for Fashion Design
Industrial designs32 protection is the most widely used legal protection model for
fashion design. Most countries protect fashion design as industrial designs. In India,
the law relating to the protection of industrial designs has been laid down in the
Designs Act, 2000.33 And this is the primary law employed by fashion designers to
protect their fashion designs.
The Designs Act affords protection to the design registered under the Act.
Section 2 (d) of the Designs Act defines the term design as follows:

Katelyn N. Andrews (2012), note 20, p. 190.

Statement of Jeffrey Banks, fashion designer, at HEARING, Note 29.
32 Industrial design is the ornamental or aesthetic aspect of a useful article. 32 The ornamental aspect
may consist of the shape and/or pattern and/or colour of the article. To be considered as an industrial
design, a design must satisfy the following two conditions:
1) The ornamental or aesthetic aspect must appeal to the eye. In other words design must be
judged solely by the eye and not by any functional considerations. The words judged solely by
the eye intend to exclude cases where a customer might choose an article of that shape not
because of its appearance but because of the shape that made it more useful to him [Amp.vs.
Utilux (1972) RPC103 at 108(HL)]. The customer must be influenced only by the eye and not
by the suitability of the article for any purpose. However, certain design features of an article
may perform a useful purpose whilst also affecting the appeal of the article to the potential
customer.
2) The article must be reproducible by industrial means. If this element is missing, the creation
may rather come under the category of art, whose protection is assured by copyright law,
rather than by a law on industrial property.
See, World Intellectual Property Organization (WIPO) (1988), Background Reading Material On
Intellectual Property, Geneva: WIPO, p. 189.
33 Enacted on 25th May 2000, the Designs Act came into force on 11 th May 2001. Full text of the Act is
available at, < http://www.ipindia.nic.in/ipr/design/design_act.PDF>.
30
31

8|Page

[D]esign means 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 or property mark as defined in section 479 of the Indian Penal Code
or any artistic work as defined in clause (c) of section 2 of the Copyright Act,
1957.
It means that not every design but only those designs which fit into the definition of
design as provided under Section 2 (d) of the Act can be registered under the
Designs Act. Apart from it, a design, to get registration and, consequently, to get
protection under the Designs Act, must satisfy the ensuing conditions as well:
1) It must be new or original.
2) It must not have been disclosed to the public anywhere in India or in any
other country by publication in tangible form or by use or in any other way
prior to the date of filing for registration.
3) It must be significantly distinguishable from known designs or combination of
known designs.
4) It must not comprise or contain scandalous or obscene matter.34
From the perspective of fashion industry, the Act does not protect the entire garment
as a whole; rather, it only protects the particular/individual aspects like shape,
pattern, colour etc. of the garment. Moreover, to be protected under the act, these
particular aspects must not only satisfy the definition of design as provided under
the Act but must also be registered under the Act.
Under the Act, the proprietor35 of a registered design gets copyright in the
design which means the exclusive right to apply the design to any article in any class
See the Designs Act, Section 4.
Section 2 (j) of the Designs Act explains proprietor of a new or original design in the following
terms:
(i) where the author of the design, for good consideration, executes the work for some other
person, proprietor means the person for whom the design is so executed;
(ii) where any person acquires the design or the right to apply the design to any article, either
exclusively of any other person or otherwise, proprietor means, in the respect and to the
extent in and to which the design or right has been so acquired, the person by whom the
design or right is so acquired; and
(iii) in any other case, proprietor means the author of the design; and where the property in or the
right to apply, the design has devolved from the original proprietor upon any other person,
includes that other person.
34
35

9|Page

in which the design is registered.36 It means the Act affords protection not in a
particular article but against a class of articles as enumerated in Schedule III of the
Designs Rules, 2001.37 Goods manufactured by the fashion designers may fall under
the following classes of goods:
1) Class 2: Articles of clothing and haberdashery - undergarments, lingerie,
corsets, brassieres, nightwear; headwear; footwear, socks and stockings;
neckties, scarves, neckerchiefs and handkerchiefs; gloves; haberdashery and
clothing accessories including buttons, clasps for garments, for headwear and
for footwear, laces, pins, hand sewing, knitting and embroidery equipment
and clothing accessories such as belts, suspenders, braces etc.
2) Class 3: Travel goods, cases, parasols and personal belongings, not elsewhere
specified - trunks, suitcases, briefcases, handbags, key-holders, cases specially
designed for their contents, wallets and similar articles; umbrellas, parasols,
sunshades and walking sticks; fans etc.
3) Class 5: Textile piece-goods, artificial and natural sheet material lace
embroidery; ribbons, braids and other decorative trimmings; textile fabrics
etc.
4) Class 10: Clocks and watches and other measuring instruments, checking
and signaling instruments - watches and wrist watches etc.
5) Class 11: Articles of adornment jewelry etc.
As per the provisions of the Designs Act, copyright in the registered design subsists
for a period of ten years from the date of registration 38 and may be extended further
for a second period of five years on the application regarding the same.39 During the
existence of copyright in registered design, the Designs Act protects registered design
from piracy.40 If a person commits any act involving piracy of registered design, he is

Ibid., Section 11 (1).

The Design Rules were framed by the Central Government in exercise of the powers conferred by
Section
47
of
the
Designs
Act.
These
Rules
are
available
at,
<http://www.ipindia.nic.in/ipr/design/des_rule.PDF>. These Rules were amended in the year 2008.
The
Design
(Amendment)
Rules
are
available
at,
<http://www.ipindia.nic.in/ipr/design/DesignRules_28Jul2008.pdf>.
38 The Designs Act, Section 11 (1).
39 Ibid., Section 11 (2).
40 Section 22 (1) of the Designs Act explains piracy of registered design. Any one of the following
acts amount to piracy:
1) The application of the design or any fraudulent or obvious imitation thereof to any article in
any class of articles in which the design is registered for the purpose of sale except with the
licence or written consent of the registered proprietor or doing anything with a view to enable
the design to be applied as aforesaid.
36
37

10 | P a g e

liable, on every act of piracy, to pay to the registered proprietor of the design a sum
not exceeding twenty five thousand rupees recoverable as a contract debt or if the
proprietor elects to bring a suit for the recovery of the damages for any such act
involving piracy, and for any injunction against thereof, to pay such damages as may
be awarded and to be restrained by injunction accordingly and the total sum
recoverable shall not exceed fifty thousand rupees.41 Proprietor of the registered
design has to institute the suit in any court not below the court of District Judge.42
The above-mentioned provisions of the Designs Act lay down in detail the
mechanism to check piracy of registered design. However, they do not suit the needs
of the fashion designing industry on account of three reasons.
1. No protection to unregistered designs
The Designs Act only protects registered designs not the unregistered designs.
Hence, fashion designers who have not duly registered their designs cannot get the
benefits of the Act. They cannot file a suit for the recovery of damages for
unauthorized copying of their designs and for an injunction against the repetition
thereof. Considering the dynamic nature of fashion industry where fashion design
houses come up with a fresh collection of fashion items at a regular interval usually
every season, fashion designers need automatic and immediate protection
independent from registration for their designs. And in the absence of the concept of
unregistered design protection, the Design Act is unable to provide the same.
Further, it deprives the designers of the privilege of putting their innovative creations
to the market, observing the reaction to the same and then deciding whether the
particular design in question is worth registration or not.
On affording protection to the unregistered design, at this juncture, one may
compare the Designs Act of India with the laws relating to industrial designs
protection of European Union and United Kingdom and United States of Americas
proposed legislations providing sui generis protection to fashion designs.
(a) European Union
2) The import for the purpose of sale, any article, belonging to the class in which the design has
been duly registered, on which is applied the registered design or fraudulent or obvious
imitation thereof.
3) The publication or exposure or causing to publish or exposure for sale a pirated article
knowing that it is a pirated article.
41 Ibid., Section 22 (2).
42 Ibid., Second proviso to Section 22 (2).
11 | P a g e

The European Union (EU) is a unique economic and political partnership between
28 European countries that together cover much of the European continent.43 In the
EU, industrial designs rights are provided at both the Community level by virtue of
the Community design and at the national level under individual national laws. A
Community design is a unitary industrial designs right that has equal effect across
the EU and regulated by Council Regulation (EC) No 6/2002 of 12 December
2001 on Community designs [hereinafter 2002 Regulation].44
The 2002 Regulation includes provisions relating to registered Community
design protection and unregistered community design protection for designs.45 On
one hand, a registered Community design confers on its holder the exclusive right to
use it and to prevent any third party not having his consent from using it. The term
use covers the making, offering, putting on the market, importing, exporting or
using of a product in which the design is incorporated or to which it is applied, or
stocking such a product for those purposes.46 On the other hand, an unregistered
Community design confers on its holder the right to prevent the acts referred above
only if the contested use results from copying the protected design. 47 However, if the
design has been created independently by a second designer i.e. the designer shows
that he/she was not aware of the existence of the protected design, the contested use
is not deemed to result from copying. 48
Unregistered Community design protects a design for a period of three years
from the date on which the design was first made available to the public within the
Community.49 Although, unregistered Community design protection is shorter and
limited in comparison to the term of the registered community design protection
which provides total twenty five years protection from the date of filing of the
application,50 but it is more suitable to those industries which are producing large

How the EU works?, available at, <http://europa.eu/about-eu/index_en.htm> (accessed on

15/01/2014).
44
Full
text
of
the
2002
Regulation
is
available
at,
<http://eurlex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2002:003:0001:0024:EN:PDF>.
45 Article 3 (a) of the 2002 Regulation defines design as follows:
[D]esign means the appearance of the whole or a part of a product resulting from the features
of, in particular, the lines, contours, colours, shape, texture and/or materials of the product
itself and/or its ornamentation.
46 2002 Regulation, Article 19 (1).
47 Ibid., Article 19 (2).
48 Ibid., Proviso attached to the Article 19 (2).
49 Ibid., Article 11 (1)
50 Ibid., Article 12
43

12 | P a g e

numbers of possibly short-lived designs over short periods of time particularly

fashion industry.
(b) United Kingdom
In United Kingdom (UK), the law relating to the protection of industrial designs has
been laid down in two different legislations: (1) The Registered Designs Act, 1949 and
(2) The Copyright, Designs and Patents Act, 1988.
The Registered Designs Act, 194951, as amended by the Regulatory Reform
Order 2006, provides for the registration of designs and the protection of registered
designs. Whereas, the Copyright, Designs and Patents Act, 1988 [hereinafter
CDPA]52 governs the provisions for design rights which subsist in an unregistered
design53 in the UK. Under the Act, design right lasts either for ten years after the first
marketing of articles that use the design, or fifteen years after creation of the design,
whichever is earlier.54 The owner of design right in an unregistered design has the
exclusive right to reproduce the design for commercial purposes by making articles
to that design.55 Reproduction of a design means copying the design so as to produce
articles exactly or substantially to that design.56 In other words, an unregistered
design right is limited in nature. It does not allow monopoly rights but the owner is
protected from copying of his/her design.
If a person without the licence of the design right owner does the exclusive right
of the design right owner, he/she infringes the design right in the design.57 Hence,
the fashion designers in the UK are comfortably protected from the evil of piracy as
they may institute a suit for infringement of their design right and may get relief by
way of damages, injunctions, accounts or otherwise under the CDPA without having
to go through the pain of registration of design.58
(c) United States of America
The
full
text
of
the
Registered
Designs
Act,
1949
is
available
at,
<http://www.ipo.gov.uk/regdesignactchanges.pdf>.
52
The
full
text
of
the
CDPA
is
available
at,
<http://www.legislation.gov.uk/ukpga/1988/48/contents>. Part III of the CDPA deals with the
Design Rights.
53 Section 213 (2) of the CDPA defines the term design as follows:
[D]esign means the design of any aspect of the shape or configuration (whether internal or
external) of the whole or part of an article.
54 CDPA, Section 216.
55 Ibid., Section 226 (1).
56 Ibid., Section 226 (2).
57 Ibid., Section 226 (3).
58 Ibid., Section 229.
51

13 | P a g e

The Innovative Design Protection and Piracy Prevention Act, 2011 [hereinafter
ID3PA]59 and the Innovative Design Protection Act, 2012 [hereinafter IDPA]60 are
two Bills seek to amend Copyright Law of the United States (Title 17, United States
Code) to extend sui generis protection to fashion design. Except few minute
differences, both the Bills are similar. A comprehensive definition of the term
fashion design has been provided under them in the following way:
A fashion design
(A)is the appearance as a whole of an article of apparel, including its
ornamentation; and
(B)includes original elements of the article of apparel or the original
arrangement or placement of original or non-original elements as
incorporated in the overall appearance of the article of apparel that
(i) are the result of a designers own creative endeavour; and
(ii) provide a unique, distinguishable, non-trivial and nonutilitarian variation over prior designs for similar types of articles.61
Both the Bills seek to protect, without registration, the fashion design apparel from
another which is substantially identical62 for a period of three years from the date
the design is first made public.63 A design shall not be deemed to have been copied
from a protected design if that design(a) is not substantially identical in overall
visual appearance to and as to the original elements of a protected design; or (b) is
the result of independent creation
These Bills are audacious attempts to protect fashion designs exclusively and
when passed and come into force, they would certainly facilitate increased design
innovation and also dissuade knock offs.

ID3PA was introduced in the House of Representatives on 13 July 13 2011. Full text of the ID3PA is
available at, < https://www.govtrack.us/congress/bills/112/hr2511/text>.
60 IDPA was introduced in the Senate of the United States on 10 September 2012. Full text of the IDPA
is available at, < https://www.govtrack.us/congress/bills/112/s3523/text>.
61 Section 2 (a) (2) of ID3PA and IDPA. Under both the Bills, the term apparel means
(A) an article of mens, womens, or childrens clothing, including undergarments, outerwear,
gloves, footwear, and headgear;
(B) handbags, purses, wallets, tote bags, and belts; and
(C) eye-glass frames.
62 The term substantially identical means an article of apparel which is so similar in appearance as to
be likely to be mistaken for the protected design, and contains only those differences in construction
or design which are merely trivial.
63 Explaining when design is made public?, Section 1310 (b) of the Copyright Law of the United
States provides:
A design is made public when an existing useful article embodying the design is anywhere
publicly exhibited, publicly distributed, or offered for sale or sold to the public by the owner of
the design or with the owners consent.
59

14 | P a g e

To conclude, it is very much obvious that in comparison to the Designs Act of

India, 2002 Regulation of EU, CDPA of UK and ID3PA and IDPA of USA establishes
an effective and efficient regime for the protection of fashion design industry as they
render protection against copying of unregistered designs. For the dynamic and
cyclic nature of fashion design industry, a protection, which is limited both in nature
and period, without going through the hassles of registration is the best way to
encourage innovation and creativity but Designs Act fails on that account.
2. Time consuming registration process
In order to avail protection against piracy under the Designs Act, design registration
is pre-requisite. For fashion designers, this process is of very little use. The process of
registration as elaborated in the Act and the Designs Rules (see Figure 2) is
intricate and time consuming hence not favorable to the needs of dynamic fashion
design industry. The whole process of design registration in India (i.e. from the filing
of application till the grant of certificate of registration) takes about 10 to 12 months.
And that is problematic because the projected life of a piece of garment in a designer
store lasts for a maximum period of one season which is three to four months. 64 In
this backdrop, a designer is left with only one option that is to apply for design
registration much before the expected date of presentation of his/her designs to the
market. This ensues into another challenge relating to the maintenance of secrecy
about designs features. During the pendency of the application, fashion design
remains susceptible to exploitation by the employees of the designers or by any other
person in whose wrong hands the design may fall. Moreover, the designer is at a risk
since the success of the design registered prior to market exhibition and sale of the
same is not known to the designer. Hence, once the registered design hits the
consumer market, the designer may find that the design is not appreciated and has
not met the expected demand thus making the whole cumbersome procedure
undertaken by the designer for registration of that design as futile one.

Poojan Sahny (2012), The Designs Act, 2000: A Fashion Faux Pas, 1-12, available at,
<http://papers.ssrn.com/sol3/papers.cfm?abstract_id=2185519> (accessed on 28/12/2013), p. 4.
64

15 | P a g e

Filing of Applications

Numbering & Dating of

Applications & Formalities Check

Substantive Examinations of
Applications

Non-compliance
of Objection(s)

No Objection

Removal of
Objection(s)

Communication of
Objection(s)

Re-examination

Abandoned

Hearing if
Objection(s) is
contested

Refusal

Appeal to
High Court

Compliance of
Objection(s)

Waving/Removal
of Objection(s)

Acceptance

In Case of Allowance of
Appeal
Notification in the Official
Gazette

Issue of Certificate of
Registration

Figure 2: Procedure for Registration of Design

16 | P a g e

3. Inadequacy of Damages
Although the Designs Act incorporates provisions for recovery of damages from any
person involved in the act of piracy of registered design but puts a limit on the
amount of money that can be recovered (i.e. not exceeding fifty thousand rupees).
This ceiling on damages is a mockery of the grandeur associated with couture
creations which are worth lakhs of rupees.
From the above discussion, it is clear that these three shortcomings of the
Designs Act create hindrance in the effective protection of fashion designs under the
Act.
B. Copyright Protection for Fashion Design
Copyright protection is another legal protection model employed by the fashion
designers to protect their creative works. In India, the Indian Copyright Act, 195765
lays down the law relating to copyright. From the perspective of protection of design
in general and fashion design in particular, Section 15 of the Copyright Act is
relevant. It provides:
15. Special provision regarding copyright in designs registered or
capable of being registered under the Designs Act,2000.-(1) Copyright
shall not subsist under this Act in any design which is registered under the
Designs Act, 2000.
(2) Copyright in any design, which is capable of being registered under the
Designs Act, 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 license, by any other person.
A careful perusal of the above provision clearly shows that Copyright Act and Designs
Act overlap each other on the issue of design protection. The Copyright Act,
particularly Section 15, when read conjointly with the Designs Act, lays down a basic
framework for design protection in India as under (also see, Figure 3):

The Copyright Act came into force on 21st January 1958. Full text of Act is available at,
<http://copyright.gov.in/Documents/CopyrightRules1957.pdf>. Since its enactment in 1957, the
Copyright Act has been amended six times, i.e., in 1983, 1984, 1992, 1994, 1999 and 2012. Recently, in
2012, the Copyright Act was amended by the Copyright (Amendment) Act, 2012. The Amendment Act
of 2012 came into force on 21st June 2012. Full text of the 2012 Amendment Act is available at,
<http://copyright.gov.in/Documents/CRACT_AMNDMNT_2012.pdf>.
65

17 | P a g e

1) Designs capable of being registered under the Designs Act, 2000 66 and
registered as per the provisions of the Act get protection under the Designs
Act only.
2) Designs capable of being registered under the Designs Act, 2000 but not so
registered get protection under the Copyright Act, 1957.
3) Designs not capable of being registered under the Designs Act, 2000, as they
are original artistic works,67 get protection under the Copyright Act. 1957.
Considering the fact that fashion design is a sort of design, the above described
framework for design protection is relevant and applicable to fashion design
protection also. It means that a fashion design which is capable of being registered as
design under the Designs Act, 2000 and registered as per the provisions of the Act
will get copyright protection only under the Designs Act and nowhere else.68 In this
scenario, copyright in registered fashion design will subsist for a maximum period of
fifteen years.69 Further, a fashion design which is capable of being registered as
design under the Designs Act, 2000 but not so registered will get copyright
protection under the Copyright Act, 1957.70 Copyright in fashion design, in this
context, will subsist up to fiftieth reproduction by an industrial process of the article
to which design has been applied.71 And at the end, a fashion design which is an
original artistic work and hence not capable of being registered as design under the
Designs Act, 2000 will get copyright protection in the form of copyright in original
artistic work under the Copyright Act, 1957.72 Copyright in an original artistic work
automatically subsists as soon as the work comes into existence and it remains

A design is capable of being registered under the Designs Act, 2000 only if it fulfils the following
two conditions:
1) It is a design as per Section 2 (d) of the Designs Act, 2000 and
2) It satisfies the conditions laid down under Section 4 of the Designs Act, 2000.
67 Section 2 (d) of the Designs Act, 2000, which defines design, specifically excludes artistic works,
as defined by Section 2 (c) of the Copyright Act, 1957, from the definition of design. According to
Section 2 (c) of the Copyright Act, 1957, artistic work means(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a
(ii) photograph, whether or not any such work possesses artistic quality;
(iii) work of architecture;7 and
(iv) any other work of artistic craftsmanship.
68 See, Section 15(1) of the Copyright Act, 1957 and Section 11 (1) of the Designs Act, 2000.
69 See, Section 11 (1) & 11 (2) of the Designs Act, 2000.
70 See, Section 15 (2) of the Copyright Act, 1957.
71 Ibid.
72 See, Section 2 (d) of the Designs Act, 2000 and Section 13 of the Copyright Act, 1957.
66

18 | P a g e

during the lifetime of the author plus sixty years, when published during the lifetime
of the author.73
It is evident, from the above discussion, that protection offered to fashion
design as an original artistic work is much stronger than the protection offered to it
as a design capable of being registered under the Designs Act, 2000. In other words,
a fashion design is better protected as an artistic work under the Copyright Act,
1957 than as a design under the Designs Act, 2000. And because of this reason,
fashion designers in India always tend to term their creative works i.e. fashion
designs as artistic works and to protect like the same. However, courts in India have
developed jurisprudence, through a series of their judgments, to determine when a
design is an artistic work and when it is a design in the sense of Designs Act,
2000. The decision rendered by the Division Bench of the Delhi High Court in the
case of Rajesh Masrani Vs. Tahiliani Design Pvt. Ltd.74 was the first and
foremost step in forming that jurisprudence.
In this case, the plaintiff (respondent in the appeal), M/s Tahiliani Design Pvt.
Ltd., was a private limited company under the creative leadership of Mr. Tarun
Tahiliani and it claimed to have a major presence in the fashion industry in India
enjoying global reputation with over 80 outlets in 20 countries. The plaintiff claimed
that the drawings which were made in the course of developing the garments and
accessories by the plaintiff were artistic works under Section 2(c) (i) of the Copyright
Act, 1957. It was further claimed by the plaintiff that the garments or accessories
themselves were works of artistic craftsmanship under Section 2(c) (iii) of the Act,
while the patterns printed or embroidered on the fabric were also artistic works in
their own right.
The plaintiff, alleged infringement of copyright by the defendant (appellant in
the appeal), Rajesh Masrani, on the ground that there was a colourable imitation or
substantial reproduction of the plaintiff's fabric prints including the underlying
drawings/sketches thereof, or of any other of the plaintiff's copyrighted works
including works of artistic craftsmanship or other literary or artistic works. The
plaintiff filed a suit seeking a decree of permanent injunction, damages and rendition
See, Section 22 of the Copyright Act, 1957.
Appeal No.: FAO (OS) No.393/2008 (decided on 28/11/2008 by A.K. Sikri and Manmohan Singh,
JJ.),
available
at,
<http://lobis.nic.in/dhc/MAN/judgement/02-122008/MAN28112008FAOOS3932008.pdf> (accessed on 15/01/2014). Also reported in:
AIR2009Delhi44; 2009BusLR280 (Del); LC2009 (1)252; 2009(39) PTC 21 (Del).
73

74

19 | P a g e

of accounts against the defendant for infringement of the plaintiffs alleged copyright
in the designs. An ex parte ad interim injunction order was passed in favour of
plaintiff. Later on, in his order, the learned Single Judge of the Delhi High Court
confirmed the ex parte ad interim injunction and allowed the application of the
plaintiff for restraining the defendant from reproducing, printing, publishing and
distributing, selling or offering for sale plaintiffs copyrighted prints in any form
whatsoever and dismissed the application of defendant for vacation of ex-parte
injunction order. Against the order, the appeal was filed by the defendant.
The

defendant/appellant

raised

four

contentions:

firstly,

the

plaintiff/respondent had no right to claim protection under the Copyright Act, 1957
as the artistic work for which copyright was alleged to exist was actually 'design'
which came under the purview of the Designs Act, 2000 and since the same was not
registered under the Designs Act, the plaintiff was not entitled to protection under
the said Act; secondly, the textile design did not constitute 'artistic work' within the
meaning of Section 2(c)(i) of the Copyright Act and was, therefore, not capable of
protection; thirdly, as no copyright subsisted under Section 15 of the Copyright Act,
1957, the suit of the plaintiff was liable to be dismissed in view of the same and
fourthly, plaintiff had no right to claim protection under the Copyright Act, 1957
because he was also not the registered owner of the copyright.
However, the plaintiff/respondent responded that the protection of the
Copyright Act, 1957 was available to him because of the following reasons: firstly, the
patterns printed or embroidered on the fabric were original artistic works; secondly,
artistic work was distinct from design and remained artistic work per se distinct
from the garment (article) to which it was applied and, therefore, was covered
under the exclusion contained in Section 2(d) of the Designs Act, 2000; thirdly, the
plaintiff was the author/owner of the copyright in the creative work (i.e. print) done
by Mr. Tarun Tahiliani for and on behalf of the plaintiff, or by designers employed by
the plaintiff-company; fourthly, the prints, which were the subject matter of the suit,
were part of the couture line and not more than twenty or possibly fewer copies were
made of any single costume and fifthly, registration is not a prerequisite to get the
protection against infringement under the Copyright Act, 1957. It was further argued
by the plaintiff that since the subject matter of the suit (i.e. print) was original
artistic work and was covered within the definition of Section 2 of the Copyright Act,

20 | P a g e

the case for infringement of copyright was made out against defendant within the
meaning of Sections 13 and 14 of the Copyright Act.
The Honourable Court, after analysing the relevant provisions of the Designs
Act, 2000 and the Copyright Act, 1957 and after examining the plaintiffs mode of
creation and execution of the artwork on a finished garment, held that the plaintiffs'
work was entitled for protection under Section 2(c) of the Copyright Act and was an
original artistic work. Since the work was an 'artistic work' which was not covered
under Section 2(d) of the Designs Act, 2000, it was not capable of being registered
under the Designs Act and the provisions of Section 15(2) was not applicable.75 It was
further pointed out by the Court that maximum twenty copies were made of any
single costume/ garment on which plaintiffs work (i.e. print) was applied. Therefore,
Section 15 (2) of the Copyright Act, 1957, which bars the subsistence of copyright in a
design capable of being registered under the Designs Act but not so registered upon
the reproduction of an article to which the design was applied more than fifty times,
was not applicable in the present case and copyright rightly vested with the plaintiff
with regard to his artistic work under the Copyright Act, 1957.76 The Court also did
not accept the plea of the plaintiff that to claim protection under Copyright Act,
registration was compulsory. The Court observed that it was settled law that
registration of the work was not compulsory and was not a condition precedent for
maintaining a suit for damages for infringement of Copyright. 77 In view of the
foregoing and after making comparison of the works of both plaintiff and defendant,
the Court concluded that defendant committed infringement of copyright of plaintiff
and it was a flagrant case of piracy of copyrights.
Although a clear and elaborate distinction between copyright in artistic work
and copyright in design was not made in this judgment, nevertheless its
importance for fashion industry could not be negated. This case clearly lays out the
interface between the Designs Act, 2000 and the Copyright Act, 1957. Copyright
protection used to be forfeited by many designs because of Section 15 (2) of the
Copyright Act. But this decision demonstrates that in the cases of real fashion

Ibid., Paragraph 26.

Ibid., Paragraph 14.
77 Ibid., Paragraph 34.
75

76

21 | P a g e

designers who make exclusive lines, where reproduction is limited, copyright law acts
as a powerful tool of protection.78
The jurisprudence which was developed in aforesaid case was further
elaborated, by the Division Bench of the Delhi High Court, in a detailed and lucid
manner in Microfibres Inc. Vs. Girdhar & Co. & Anr.79. This case was related
with the infringement of design of upholstery fabrics.
The Plaintiff (appellant in the appeal), Microfibres Inc., was a manufacturer
and seller of upholstery fabrics with designs derived from the original and unique
artistic works either conceptualized or drawn by its employees or by assignation of
the copyright in such artistic works to the appellant by the original artists. Plaintiff
considered those designs as artistic works and alleged violation of its copyright in the
artistic works applied to upholstery fabrics by the defendant. Allegation of an
attempt to pass off the goods of the defendants as that of the plaintiff was also
levelled.
The defendants (respondent in the appeal), Girdhar & Co. & Anr., contended
that the designs, in respect of which the plaintiff claimed proprietary right and
protection under the Copyright Act, 1957, did not constitute artistic work rather they
were designs in the sense of the Designs Act, 2000 and hence not capable of
protection within the meaning of Section 14(c) of the Copyright Act. In case novelty
existed in the same, the statutory protection in such designs could only be under the
provisions of the Designs Act, 2000 by obtaining necessary registration there under.
And that was not done in this case by the plaintiff. Moreover, the defendants argued
that copyright in designs would also not subsist in view of provisions of Section 15(2)
of the Copyright Act, 1957 as fabric or cloth to which said designs were applied had
been reproduced more than fifty times.
Accepting the pleas made by the defendant, the learned Single Judge of the
Delhi High Court held that plaintiffs work was design capable of being registered
under the Designs Act, 2000 and not the artistic work. The exclusion of an artistic
work as defined in Section 2(c) of the Copyright Act from the definition of design
under Section 2(d) of the Designs Act was only meant to exclude the original artistic
Zakir Thomas (2009), IP Case Law Developments, Journal of Intellectual Property Rights, 9:
247-257, p. 254.
79 Appeal No.: RFA (OS) NO.25/2006 (decided on 28/05/2009 by Mukul Mudgal and Vipin Sanghi,
JJ.). Also reported in: LC2009 (2)229; 2009(40) PTC519 (Del).
78

22 | P a g e

works like paintings of M.F. Hussain.80 It was the original paintings, sculptors and
such works of art which were sought to be specifically excluded from the definition of
design under the Designs Act, 2000. The Court held that, thus, in the present case,
the Design Act which would give protection to the appellant and not the Copyright
Act. However, the plaintiff failed to register his works under the Designs Act hence
no protection would be available to him under the said Act.
Aggrieved by the Judgment of the learned Single Judge, the plaintiff preferred
an appeal. The Division Bench of the Delhi High Court, after making a detailed
analysis of Section 2(c) of the Copyright Act read with Section 2(d) of the Designs
Act and Section 15(2) of the Copyright Act and their interplay with each other, did
not find any merit in the appeal and dismissed the same. In this whole process, the
Court made certain observations which are of great significance not only to
understand the distinction between artistic work and design but also to discern
the scope of copyright in artistic work and copyright in design.81 The Court held:

See, paragraph 65 of the Judgment delivered on 13/01 /2006 by Sanjay Kishan Kaul, J. in
Microfibres Inc. Vs. Girdhar & Co. & Ors., available at, < http://indiankanoon.org/doc/1210059/>.
Also reported in: 128 (2006) DLT 238, 2006 (32) PTC 157 (Del).
81 These observations can be summarized as follows:
On artistic work and design
1. It is the exclusive right of the holder of a Copyright in an original artistic work to reproduce
the work in any material form. When the copyright holder of an original artistic work
reproduces the same in another material form by employing an industrial process on an
article, and the same results in a finished article which appeals to the eye as adjudged solely
by the eye, then the features of shape, configuration, pattern, ornament or composition of
lines or colours applied to the article by the industrial process constitutes a design, within
the meaning of this expression as defined under the Designs Act.
2. There is a clear distinction between an original artistic work, and the design derived from it
for industrial application on an article. This position is clarified by the use of the expression
'only' before the words 'the features of shape, configuration, pattern, ornament or
composition of lines or colours' in the definition of 'design' in the Designs Act. Therefore, the
original artistic work, which may have inspired the creation of a design, is not merely the
feature of shape, configuration, pattern, ornament or composition of lines or colours which
are created to apply to an article by an industrial process. The original artistic work is
something different from the design.
3. It is not necessary that in every case a design has to be preceded by an artistic work upon
which it is founded. A craftsman may create a design without first creating a basic artistic
work. Whether or not a design is preceded by an original artistic work, a design would, in its
own right qualify to be termed as an artistic work within the meaning of Section 2(c) of the
Copyright Act. However, the design may or may not enjoy a copyright protection under the
Copyright Act, depending on whether it is an original artistic work or not.
On copyright in design and copyright in artistic work
1. Under the Designs Act, a copyright has a different connotation from a copyright under the
Copyright Act. Under the Designs Act, copyright means the exclusive right to apply the design
to any article in any class in which the design is registered.
2. The expression copyright in any design used in Section 15(2) means the copyright as
understood under the Copyright Act, and not under the Designs Act. There can be no claim for
Copyright under the Copyright Act in an artistic work which does not have the quality of
possessing originality. The holder of a copy of an original artistic work cannot claim copyright
80

23 | P a g e

. . . [I]n the original work of art, copyright would exist and the author/holder
would continue enjoying the longer protection granted under the Copyright Act
in respect of the original artistic work [per se]. . . . A design created from such
[original work of art] for the purpose of industrial application on an article so as
to produce an article which has features of shape, or configuration or pattern or
ornament or composition of lines or colours and which appeals to the eye would
also be entitled design protection in terms of the provisions of the Designs Act.
Therefore, if the design is registered under the Designs Act, the Design would
lose its copyright protection under the Copyright Act but not the original
painting. 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.82

protection. Therefore, to be entitled to protection under the Copyright Act, the design should
have originality.
On Section 15 of the Copyright Act, 1957
1. Section 15 of the Copyright Act deals with the extent of, and the conditions for the copyright
protection to an artistic work, as an artistic work under the Copyright Act, which is a design
registered or capable of registration under the Designs Act.
2. As per Section 15 (1), once the design is created and got registered under the Designs Act,
whether or not the design is eventually applied to an article by an industrial process, the
design loses its protection as an artistic work under the Copyright Act.
3. If the design derived from the original artistic work is exploited beyond the specified limit (i.e.
if the design is applied more than 50 times by an industrial process on an article) the
copyright in the design ceases as per Section 15 (2) of the Copyright Act unless it is registered
under the Designs Act.
4. The operation of Section 15(2) of the Copyright Act does not exclude from the ambit of
Copyright protection either the original 'artistic work' upon which the design is based or the
design which by itself is an artistic work. What stands extinguished under Section 15 of the
Copyright Act is the copyright in the design itself as applied to an article and not the copyright
in the artistic work itself. The original artistic work, as contrasted with the applied artistic
work that is the design, 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. The commercial/industrial manifestation of original artistic work such
as the design derived from and founded upon the original artistic work for the purpose of
industrial production of furnishings would only be covered by the limitations placed in
Section 15 of the Copyright Act.
5. The object of the two legislations was to prevent long term usage by the person who was
commercially exploiting something and yet wanting to claim an exclusive monopoly through
longer period of copyright protection afforded to an artistic work. Section 15 of the Copyright
Act demonstrates the legislative intention of integrating the Copyright and Designs Acts.
Commerce and art have been treated differently by the Legislature and any activity which is
commercial in nature has been granted lesser period of protection. On the other hand, pure
artistic works per se have been granted a longer protection. This is precisely why the
legislature not only limited the protection by mandating that the copyright shall cease under
the Copyright Act in a registered design, but in addition, also deprived copyright protection to
designs capable of being registered under the Designs Act, but not so registered, as soon as
the concerned design had been applied more than 50 times by industrial process by the owner
of the copyright or his licensee.
82 Paragraph 45 of the Division Benchs Judgment. This paragraph was referred and relied upon by the
Division Bench of the Delhi High Court, albeit in different factual circumstances, in Kiran Shoes
Manufacturers Vs. Registrar of Copyrights and Another [Appeal No. : RFA 750 OF 2010
(decided on 24.2.2012 by A.K. Sikri And Rajiv Sahai Endlaw, JJ.). Also reported in: 2013 (54) PTC
24 | P a g e

In the backdrop of the judgements discussed above, it can be concluded that 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
1) 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.
The above proposition apparently looks very attractive to fashion designers as it
extends copyright protection for their creations. However, the scope of this
protection is limited and not worthwhile for large number of fashion designers as it
enables the designers to protect only their couture lines wherein only limited pieces
of an exclusive garment are created.83 Garments which are parts of ready to wear and
mass market collections can-not be rendered protection under the Copyright Act,
1957 because they are produced in large quantities (at least more than fifty).
C. Trademark Protection for Fashion Design
Trademarks help to maintain a prestige premium for particular brands and can be
quite valuable to apparel and accessory firms. The utility of trademark law, however,
in protecting fashion designs, as distinct from fashion brands, is quite limited.84 A
trademark is useful for a fashion design only in that situation when it is visibly
integrated into design to such an extent that it becomes an element of the design.
There is a growing tendency among fashion designers to incorporate a trademarked
logo on the outside of the garment at the time of creation of clothing and accessory
designs. And in these circumstances, the logo becomes part of the design, and thus
trademark provides significant protection against design copying.
In India, the Designs Act of 2000 under Section 2(d) while defining design
expressly excludes the trademark within the meaning of Section 2(1) (v) of Trade and
Merchandise Marks Act, 1958 which after the repeal shall be corresponding
386 (Del.) (DB)] (see paragraph 11). In this case side trim device applied on sport shoes was held to
be a design by the Honourable Court.
83 Poojan Sahny (2012), note 64, p.11.
84 Kal Raustiala and Christopher Sprigman (2006), note 19, p. 1701.
25 | P a g e

definition of Trade Marks Act, 1999. All this would mean that there is an express
exclusion under the Designs Act anything which is capable of being trademark.
Therefore, a proprietor by electing to go for registering a design explicitly forecloses
his right to claim the said article as trademark which is evident from the definition of
design under Section 2 (d) of the Designs Act. It means that a fashion design which
is trademark cannot get protection under the Designs Act and similarly if a fashion
design is registered under the Designs Act the same cannot be protected under the
Trade Marks Act, 1999.
However, it is pertinent here to mention the judgement rendered by the Delhi
High Court in Micolube India Ltd. Vs. Rakesh Kumar trading as Saurabh
Industries & Ors.85 Answering affirmatively to a question whether a remedy by
way of passing off action would be available qua a registered design used as a
trademark by the plaintiff, the Honble full bench by 2:1 majority held that the the
plaintiff would be entitled to institute an action of passing off in respect of a design
used by him as a trade mark provided the action contains the necessary ingredients
to maintain such a proceeding. The Court observed that:
[H]aving regard to the definition of a design under Section 2(d) of the Designs
Act, it may not be possible to register simultaneously the same mater as a
design and a trade mark. However, post registration under Section 11 of the
Designs Act, there can be no limitation on its use as a trademark by the
registrant of the design. The reason being: the use of a registered design as a
trademark is not provided as a ground for its cancellation under Section 19 of
the Designs Act.86
After making these observations, the Court held that a suit for infringement of a
registered design and a passing off action could be instituted simultaneously however
a composite suit for infringement of a registered design and a passing off action
would not lie.87 Moreover, the Court accentuated that a suit for passing off action
could be instituted before the expiry of the statutory period provided under Section
11 of the Designs Act.88
This judgement has expanded the ambit of trademark protection for design.
Consequently, a fashion design registered under the Designs Act not only gets
Case No.: CS (OS) No. 1446 of 2011 (decided on 15/05/2013, majority opinion was given by Rajiv
Shakdher and Sanjay Kishan Kaul, JJ., whereas dissenting opinion was rendered by Manmohan
Singh, J.). Also reported in: 199 (2013) DLT 740.
86 Ibid., paragraph 22.8.
87 Ibid., paragraph 34 (iii).
88 Ibid., paragraph 34 (ii).
85

26 | P a g e

protection under the Act but can also be protected by instituting an action for passing
off provided that design was being used as trademark post-registration. To conclude,
this judgement has unlocked a new vista for design protection.
VI. Summing Up
The global fashion industry is growing by leaps and bounds. It has become a
significant part of the global economy and should therefore receive intellectual
property rights protection for its growth. At the heart of growing fashion industry are
fresh and new designs. However, growth of this industry is marred by fashion design
piracy. The Indian fashion design industry is encountering with the same problem.
And on the basis of analysis made in the preceding section of this paper it can be
rightly concluded that current intellectual property regime in India is not sufficient
and efficient enough to protect Indian fashion design industry. There is a need to
improvise the current intellectual property regime in India so as to make it more
favourable to protect fashion design from piracy. First and foremost, a separate
definition of fashion design should be included in the Designs Act, 2000. And this
definition should facilitate the entire appearance and over all look of a particular
piece of apparel or garment as against the present definition under Section 2 (d) of
the Act which protects each aspect of a garment individually. Secondly, a simplified
procedure for design registration should be made under the Designs Act, 2000 as
present procedure is a tedious one and does not suit the needs of dynamic fashion
design industry. And thirdly, the provision for protection of unregistered design
should also be included in the Designs Act, 2000. The protection for even short
period of time will serve the needs of fashion design industry in this situation.
Incorporation of all these suggestions would certainly make the current Indian
intellectual property regime more effective and efficient enough to deal with the
menace of fashion design piracy. This would encourage fashion designer to innovate
new designs which would ultimately lead to the growth of the fashion industry.

27 | P a g e

Protection Available to Designs in

India

Designs capable of being

registered under the Designs Act,
2000

Designs not capable of being

registered under the Designs Act,
2000 but are original artistic works

If Registered

If Not Registered

Protection Under the Designs

Act, 2000
[as per Section 15 (1) of the Copyright
Act and Section 11 of the Designs Act]

Protection
Under the Copyright Act, 1957
[as per Section 15 (2) of the Copyright
Act]

Nature and scope of

Protection:
Copyright in registered design;
Exclusive right to apply design to
any article in any class in which the
design is registered.

Term of Protection:
10 years from the date of
registration. Extendable for a
second period of 5 years.

Nature and sccope of

Protection:
Copyright in design; Exclusive
right to apply design to any article.

Protection Under the Copyright Act,

1957
[as per Section 13 of the Copyright Act]

Nature and scope of

Protection:
Copyright in original artistic
works; exclusive right to do or
authorise the doing of any of the
acts mentioned in Section 14 (c)
of the Copyright Act .

Term of Protection:
Lifetime of the author plus 60
years.

Term of Protection:
Upto 50th reproduction by an
industrial process of the article to
which design has been applied.

Figure 3: A Synoptic View of the Protection of Designs in India

28 | P a g e

29 | P a g e