A Doctrinal Analysis of the Legal Frameworks Governing the Indian Fashion Industry
ABSTRACT
The Indian fashion industry, which is worth over one hundred billion United States dollars and is increasing with a compounded annual rate, stands in a curious niche in the intellectual property law. Despite its economic importance, legal framework manageable in safeguarding fashion designs, textile patterns and apparel trade dress in India is still fragmented, under-theorised and poorly functioning in practise. This paper will engage in a doctrinal analysis of the overlapping statutory regimes; the Designs Act, 2000; the Trade Marks Act, 1999; the Copyright Act, 1957 and the Geographical Indications of Goods (Registration and Protection) Act, 1999 as they are relevant to protecting the intellectual property in the field of fashion in India. The piece critically assesses the problem of the continued design piracy, the doctrine of originality when it is used in the artistic craftsmanship, the unresolved conflict between industrial use and the artistic copyright and the extent of the trade dress protection in the Trade Marks Act. It also compares the high-profile judicial precedents of the Supreme Court of India and other High Courts, and compares the Indian system with the better-developed regimes of the European Union and of the
United States. The paper concludes that India needs either a sui generis fashion legislation or a major overhaul of current intellectual property rules to curb the gaps in the current intellectual property regimes, and suggestions towards a legislative change are provided.
Keywords:
Fashion Law, Design Piracy, Intellectual Property, Trade Dress,Geographical Indications
INTRODUCTION: JURIDical lacuna in Indian Fashion Law.
Law and fashion as an area of legal study is a relatively advanced area of legal study in the United States and the European Union, and yet is extremely infantile in the Indian jurisprudential field. One of the largest employers in the national economy is the Indian fashion industry that consists of haute couture, mass-market clothes, textile design, handloom, and luxury accessories. However, the intellectual labour that is inherent in the creative work of a designer – the contour of a line, a pattern of a fabric, the trade dress of a brand of luxury product – does receive some sort of legal safeguard, but of an erratic and in any case entirely false character. The organisational weakness could not be blamed on a total lack of law. India has a set of intellectual property laws that can hypothetically deal with different aspects of fashion- related conflicts. Designs act, 2000, offers protection to new and original designs used o articles of manufacture. Copyright Act of 1957 gives protection to original artistic work even in fabric and textile. The Trade Marks Act, 1999 secures distinctive marks, and by default, the trade dress and get-up of fashion products. The Geographical Indications of Goods (Registration and Protection) Act, 1999 is one protection that covers the provenance of the traditional textile crafts like Banarasi sarees, Pochampally ikats, and Chanderi fabrics. However, even with this legal plurality, the loopholes in the doctrine notably those in the safeguarding of unregistered designs, originality requirement of artistic works incorporated in functional clothing, and the lack of a specialised enforcement tool, expose Indian fashion designers to a critical situation. This article is developed in five sections.
Part II charts the statutory framework. Part III is an analysis of the main doctrine scandals, specifically design piracy, and copyright subsistence in fashion. Part IV examines the geographical indications regime for traditional textiles. Part V gives a comparison between the Indian framework and European and American models. Part VI develops proposals for reform.
The Statutory Architecture: A pluralist yet disjointed Framework.
The Designs Act, 2000
The main legal tool of protection of the industrial design in India is the Designs Act, 2000 (hereinafter "the Act). Section 2(d) of the Act means a design is the features of shape, configuration, pattern, ornament, or composition of lines or colours applied to any article, whether in two or three-dimensional form, which are attractive to the eye and are considered by the eye alone. It is the critical qualification inherent in this definition, namely that the design should be applied to an article which has been completed, and must be attractive to the eye, which has given rise to much litigation. To be registered under the Act, a design must meet four criteria, namely novelty, originality, non-disclosure before registration, and non-functionality, that is, the design should not be determined exclusively by practical considerations. The Act gives the registered proprietor the right of exclusiveness of a maximum period of ten years which is renewable by five more years and during which period infringement of the registered design occurs when it is reproduced unauthorised. The inherent flaws of the Designs Act framework as a fashion law concern is that artistic works are categorically excluded by the framework. Section 2(d) clearly rules out any mode or principle of construction or other aspect of a design that is in reality a mere mechanical device. More importantly, when a design is registered under the Designs Act it ceases to have any concurrent copyright protection under the Copyright Act, by virtue of Section 15(1) of the latter Act. On the other hand, in the case where a design can be registered, but has not been so, then under Section 15(2) the copyright in such a design only lasts to the extent of fifty reproductions by industrial process. It is a legislative framework that develops a perverse incentive regime which punishes the designer whodoes not register and also clips off copyright protection on designs that are mass Exploited.
Copyright Act, 1957: Artistic Craftsmanship and Its Discontents.
Copyright Act, 1957, extends protection to original artistic works, and by virtue of Section 2(c), a protection is given to paintings, sculptures, drawings, engravings, photographs, and artistic craftsmanship. The notion of artistic craftsmanship is at the core of the fashion law since it could be used to refer to hand-woven fabrics, embroidered clothes, and other art-related design work. The law is still not resolved, and in Microfibres Inc. v. Girdhar and Co. (2009) 2 , the Supreme Court of India struggled a lot
The Designs Act, 2000, No. 16 of 2000, § 2(d) (India). See also Wintex Corporation v. Ajmer Silk Mills, (2005) 3
CHN 256 (Cal.) (discussing the applicability of the aesthetic appeal test under the Act to textile designs
with the definition of this concept.
The functionality doctrine is the longstanding conflict in the application of copyright law to fashion. Any garment, however aesthetically thought out, is a useful article. The common law jurisdictions have typically believed that copyright does not safeguard the functional features of clothing – the sleeves, collars, and seams- but could safeguard detachable artistic features. The separability doctrine is not formally codified in the Indian Copyright Act, and there has not been a sufficiently robust jurisprudence developed by the Indian courts around this doctrine. The outcome is a vacuum of doctrine that creates confusion for designers on what they should enjoy in terms of rights.
The Trade Mark Act, 1999: Trade Dress and Passing Off.
The Trade Marks Act offers an avenue in protection of fashion brands, logos, and product get-up. Section 2(1) (zb) gives a general understanding of a trade mark as any mark that has the capacity to make goods or services of one business unique to others. The trade dress, the general trading appearance of a commodity, such as its colour, design, form, and packaging, is not a formally defined concept in the Indian legislation but was identified by the judiciary as a result of the tort of passing off. The pioneer ruling by the Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (2001) encompassed the factors of passing off test in India, such as the nature of the marks, the extent of similarity, the type of customers, and the possibility of confusion. Although this test was developed in the pharmaceutical context, it has been used by High Courts to create trade dress disputes. A body of cases by the Delhi High Court on luxury fashion houses has reiterated that the visual identity of a fashion brand is protectable goodwill.
Doctrinal controversies in the Indian fashion law.
Microfibres Inc. v. Girdhar & Co., (2009) 40 PTC 519 (Del.) (holding that artistic works embedded in textile designs may attract copyright protection as works of artistic craftsmanship, subject to the limitations of § 15 of theCopyright Act).
N.R. Dongre v. Whirlpool Corp., (1996) 5 SCC 714 (India) (affirming that the law of passing off extends to protect the trade dress and overall commercial image of products against deceptive imitation, even absent formal trade mark registration).
Design Piracy: The Enforcement Crisis.
The least registered or unregistered design used is design piracy, which is the illegal copying of designs and is, perhaps, the most pressing legal issue facing the Indian fashion industry. The organised retail and export industry lists huge losses that are as a result of piracy, but the Designs Act enforcement can still be proved to be quite ineffective. Under Section 22, the Act gives the court alternative remedies such as injunction and damages, but does not stipulate criminal punishment against infringements on design. This is completely unlike the Trade Marks Act, where there are remedies of both nature, civil and criminal, including imprisonment under Section 103. 4 The lack of criminal penalties in the Designs Act is a lawmaking anomaly that the Parliamentary Standing Committee on Commerce has, in its 2021 report on intellectual property rights, criticised. The Committee noted that the civil-only enforcement model does not provide deterrence, especially among serial offenders who will be operating in informal markets. High Courts of Delhi and Bombay have often awarded ex parte ad interim injunctions in infringement cases of design, but the lack of police authority to take infringing goods without a court order is seriously detrimental to regular enforcement at the point of sale. The issue of unregistered design protection is also quite pressing. In contrast to the European Union, which, through Council Reg. (EC) No. 6/2002, offers protection to unregistered Community designs of three years, starting with initial disclosure, India has no similar protection of unregistered designs other than the weaker copyright protection in the form of Section 15(2) of the Copyright Act. The time elapsed by formal registration and the high cost of the registration mean that the Designs Act system is virtually off-limits to a significant portion of Indian designers since fashion designs have notoriously short commercial lifecycles, typically less than one season.
The Question of originality in textile designs.
The Trade Marks Act, 1999, No. 47 of 1999, § 103 (India) (providing for imprisonment of not less than six months and not more than three years, and fine of not less than fifty thousand rupees and not more than two lakh rupees, for applying false trade marks to goods). See Parliamentary Standing Committee on Commerce, Report on Intellectual Property Rights Regime in India, 161st Report (2021). The copyright in the setting of textile designs has been a sore topic in terms of adjudication. Patterns that are based on centuries-old craft traditions have been hard to apply to the standard of originality, which, in the classical formulation of University of London Press Ltd. v. University Tutorial Press Ltd. (1916), which has been adopted by the Indian courts, is the work of the author working independently and not copying the work of another. The case of Rajesh Masrani v. Delhi High Court. Tahiliani Design Pvt. Ltd. (2008) 5 posed but did not necessarily answer the question of whether a designer who comes up with a new version of an old motif obtains a copyright in that version. The Court observed that although the traditional designs in themselves are not subject to protection since they fall under the domain of the common good, a reasonably original design or adaptation can be the subject of protection. This argument, as well-grounded conceptually, leaves it unclear what exactly the boundaries of originality are. There are practical consequences of the greatest magnitude to this uncertainty. The person who is a designer at Varanasi and designs a new pattern of the Banarasi weave, including traditional brocade motifs in a new design, cannot be sure that the work will be covered by copyright, or that it can be registered as a design, or that it will be subject to unauthorised copying as soon as it is first publicly revealed. This juridical unpredictability is counterproductive to innovative investment, and this is a structural deterrent to innovation in the Indian textile business.
Geographical Indications and the Protection of Traditional Textiles.
In the protection of the traditional Indian textile crafts, the Geographical Indications of Goods (Registration and Protection) Act of 1999 and the Rules therein offer a more effective, or at least arguably, successful mechanism. An indication identifying the origin of such goods as agricultural goods, natural goods or manufactured goods as originating in the territory of a country, in a region or a locality in that territory, where a particular quality or reputation, or other characteristic of the goods is essentially due to its 5 Rajesh Masrani v. Tahiliani Design Pvt. Ltd., (2008) 153 DLT 152 (Del.) (analysing the originality threshold for copyright subsistence in fashion design incorporating traditional textile motifs). geographical origin, is known as a geographical indication as defined in Section 2(1)(e) of the Act. 6
Many Indian textile crafts have been registered as GI, whose list includes Banarasi Saree(Uttar Pradesh), Pochampally Ikat(Telangana), Chanderi Fabric(Madhya Pradesh), Phulkari(Punjab), Kancheepuram Silk(Tamil Nadu), and Mysore Silk(Karnataka). These registrations provide communal safeguarding to the group of artisans related to the specified geographical area and ban non-originating producers from commercially utilizing the geographical indication. The GI framework, however, has serious implementation deficiencies. First, it is mostly community based and reactive in enforcing, with no single government enforcement body that is comparable to the Food Safety and Standards Authority or the Bureau of Indian Standards. Second, the registered GI does not disallow non-originating manufacturers to make a product with the same visual appearance without the use of the safeguarded geographical designation – a practice that inflicts commercial damage on the artisan communities, due to confusion in the market. Third, the legal standing provisions in Section 11 of the Act that provide that an association of producers or the state government in which the action is infringed must be the registered owner have led to administrative delays in the prosecution of the infringement actions. Obiter remarks of the Supreme Court in the case of Bata India Ltd. v. Pyare Lal and Co. on the necessity of effective implementation of geographical indications rights are yet to be fulfilled in the legislative field. A revision of the enforcement framework of the GI Act, such as the ability to take suo motu action by the GI Registry, stronger penalties, and direct standing on behalf of individual artisans in infringement cases, is strongly needed.
Comparative Analysis: EUROPEAN union and United States Models.
Sui Generis Design Regime of the European Union.
The Geographical Indications of Goods (Registration and Protection) Act, 1999, No. 48 of 1999, § 2(1)(e) (India). See generally Dev Gangjee, Relocating the Law of Geographical Indications 1–30 (Cambridge University Press 2012) (providing a comparative analysis of GI protection frameworks with specific reference to Indian traditional crafts). The most educative comparative approach to Indian fashion law reform is the European Union. The Community Design Regulation introduces two levels of protection: Registered Community Designs, which offer a protection period of up to twenty-five years; and Unregistered Community Designs, which offer a period of protection of three years after the disclosure date in the European Union. The unregistered tier is especially relevant to fashion, as it provides legal protection in line with the commercial fact of fast- changing collections of seasonal fashion without the expense and time lag of formal registration. The EU regime also entails the notion of design freedom, where the court is required to determine the overall impression evoked to a knowledgeable user whilst considering the amount of freedom the designer has. This subtle gesture, neither neglecting the limitations of the earlier art, nor seeking a perfect novelty, is much more responsive to the conditions of fashion design than the comparatively crude novelty criterion of the Indian Designs Act.
The Innovative Design Protection Act and the United States Approach.
The U.S has always had a low level of protection for fashion designs, and the useful articles doctrine of the Copyright Act of 1976 has excluded most garment design protection under copyright. The case of Star Athletica, LLC v the Supreme Court of the United States. The decision concerning the Variety Brands, Inc. (2017) broadened the area of the copyright protection of the design elements that are not merged with the useful article and meet the criteria of the copyright on their own. The Court decided that the surface designs on cheerleading uniforms were a copyrightable separable element of art, although the elements could not be separated physically on the garment. The case of Star Athletica has had an effective impact on the American fashion industry and provides a doctrinal example that can be emulated by the Indian courts. The conceptual separability test, i.e., whether an aspect, when joined with the useful article, would pass as a protectable pictorial, graphic, or sculptural work, can easily adjust to the reality of the Indian legal system, in distinction between artistic creations and designs applied to articles.
Proposals of reforms: On the way to a coherent Indian Fashion Law
Framework.
Based on the above examination, this paper proposes six reforms that can be enacted into law and be judicial. On the one hand, the Designs Act, 2000 needs to be revised to add a system of unregistered design protection, which would offer automatic design protection for a period of three years, upon first disclosure, as in the European Community Design Regulation. This amendment would do away with the registration bottleneck, which would make the Act inaccessible to short-cycle fashion products.
Second, the Designs Act should introduce criminal penalties for wilful and commercial-scale infringement of design equal to those under Section 103 of the Trade Marks Act. The lack of equal treatment between criminal infringement of trade marks and pure civil infringement of design marks is an inexcusable policy exception that lowers deterrence.
Third, the conceptual separability doctrine in relation to fashion garments, as in Star Athletica 7 , should be codified in the Copyright Act, 1957, giving a clear indication to the courts on the identification of the elements of the copyrightable in fashion garments. The current Section 15 mechanism, which kills the copyright the moment that industrial application has surpassed fifty reproductions, ought to be reviewed to make sure that the true artistic creativity is not being stripped unconsciously by commercial success.
Fourth, it ought to create a specialised Fashion Intellectual Property Tribunal, or, alternatively, a Fashion Law Division with jurisdiction over GI enforcement acts and fashion-related trade dress disputes, should be created within the Intellectual Property Division of the High Courts. Specific adjudication would minimise time and build the expertise that is now scattered in civil courts in general. 7 Star Athletica, LLC v. Varsity Brands, Inc., 580 U.S. 405 (2017) (establishing the conceptual separability test for copyright protection of design elements applied to useful articles under the Copyright Act of 1976, 17 U.S.C. § 101). See also Council Regulation 6/2002, 2002 O.J. (L 3) 1 (EC) (establishing the Community Design system of the
European Union, including automatic unregistered Community design protection for a period of three years.
Fifth, the Geographical Indications Act needs to be revised to provide direct standing to individual artisans and artisanal groups in infringement cases, not necessarily through an intermediary, a registered producers association. The current channelling demand introduces a backlog and a feasible challenge to the available justice for the economically most disadvantaged stakeholders in the Indian textile ecosystem.
Sixth, the Government of India might look into the possibility of having a standalone Fashion Law Act, which would constitute a sui generis legislative tool and bring together the currently disjointed provisions of the Designs Act, Copyright Act, and Trade Marks Act as they relate to fashion and textile products. It is an instrument with international best practice knowledge and with a keen eye on the Indian craft heritage, it would send a strong message to the legislature regarding the safeguarding of creative industries and give Indian designers a stable and easy-to-access legal framework.
CONCLUSION
The Indian fashion law has reached a crossroad. The home-based fashion and textile sector, which consists of city designers’ work and countryside artisans, is a colossal pool of value in terms of creativity and financial worth. Nevertheless, the legal framework upon which it can be safeguarded is a quagmire of cross-cutting and more or less conflicting statutory frameworks, adjudicated by courts which lack any expert knowledge and enforcement through mechanisms proving ineffective to the extent and nature of infringement that the industry is facing. The doctrinal examination described in this paper indicates that the current frameworks, though not devoid of legal soundness, are flawed in terms of structural incompleteness, which is indicative of their ineffectiveness. Lack of protection of unregistered designs, dilution of copywriting on industrially used designs, under-enforcement of geographical indications, and absence of criminal penalties against piracy of designs all amount to a climate where creative investment is not adequately encouraged, and infringement is not adequately discouraged. Reform is not only possible but also needed. The European approach of automatic protection of unregistered designs, the American theory of conceptual separability of copyright, and the doctrine of direct person-artisan standing in GI litigation provide real- world legislation prototypes that may be borrowed by Indian law. The creation of a unified, comprehensive, and India-specific fashion law system, or, in other words, a system that appreciates both the business demands of the contemporary fashion business and the cultural demands of its traditional craft industries, is an issue of legislative urgency that can not be postponed any longer.
Piyush Soni, Anamika Singh
4th year, B.A. LL.B. (Hons.), Symbiosis Law School, Nagpur
