FASHION IN IPR MODE: ROHIT BAL, ANJU MODI, ANITA DONGRE COPYRIGHT DESIGNS AS PLAGIARISM SPREADS Rohit Bal became the 1st Indian Designer to avail copyrights. Other prominent fashion Designers , Anju Modi and Anita Dongre Soon Follwed suit and Copyrighted thier entire collection ahead of Fashion Design council of India (FDCI) 'India courture week' this year.
Last month, Rohit Bal became the first designer in India to copyright his entire collection. Other prominent fashion designers, Anju Modi and Anita Dongre, soon followed suit and copyrighted their entire collection ahead of Fashion Design Council of India’s (FDCI) ‘India Couture Week’ this year. Plagiarism of designs is a growing concern among the Indian fashion industry and is attributed to the lack of awareness surrounding intellectual property rights (IPR) which are available to fashion designers in India. Even as awareness about IPR protection is increasing in India, the law relating to protection of fashion designers’ rights remains unclear. Copyright protection for designs Different IPRs (such as copyrights, trademarks and patents) serve different purposes- patent protects ‘inventions’, copyright protects ‘creative works’ and trademark protects ‘brand-names’ (or elements of a business which act as source indicators). The Intellectual Property (IP) of a designer, i.e. ‘designer clothes’ are best described as ‘creative works’ and are therefore eligible for copyright protection. While creative works such as artistic works are typically protected under the Indian Copyright Act, designs applied to clothes can be copyrighted under the Designs Act 2000. Under the Designs Act, designs which are applied to a specific class of articles (including garments) can be registered. A design must be registered for a particular class of articles as enumerated in the Third Schedule of the Designs Rules, 2001. ‘Articles of clothes and haberdashery’ fall in Class 02 under the Designs Rules. Under Section 11 of the Designs Act, a registered design is copyrighted for a period of 10 years from the date of registration of the design. The copyright protection can be further extended for five years. Piracy of a registered design is prohibited under section 22 of the Designs Act - this makes it unlawful for a person to apply the registered design or any “fraudulent of obvious imitation” of the design to any class of articles in respect of which the design has been registered. A person who knowingly facilitates the sale of an article which bears a pirated design is also liable for piracy of the design. This means that retailers who consciously sell articles containing pirated designs can also be punished under the Designs Act. Under section 22 of the Copyright Act, the term of protection granted to copyright-holders subsists during the life of the copyright-owner and for 60 years thereafter. According to section 15 (1) of the Copyright Act, protection under the Copyright Act is not applicable to designs which are registered under the Designs Act. Therefore, once a clothes’ design is registered under the Designs Act, the Copyright Act will not apply to it and the work will only enjoy protection under the Designs Act. If a design (which is capable of being registered under the Designs Act) has not been registered, it will be protected under section 15(2) of the Copyright Act; however, the copyright protection will expire on an unregistered design if the design has been reproduced on more than 50 articles. Issues in copyright protection of designer clothing Two kinds of designs are conceivable in clothes, namely, a drawing applied on any garment and the shape/design of the clothes (which does not necessarily bear any drawing). An example of the first kind of design is a t-shirt which bears the words, ‘I love Mumbai’ printed on the front. The shape of the t-shirt may be commonplace such as a typical round neck half sleeve t-shirt. In this case, the designer would get the drawing design, i.e. the words, ‘I love Mumbai’ (printed in a particular manner- using a unique combination of words, colours and figures) registered under the Designs Act. The second kind of design refers to the design of the clothes itself and includes elements such as shape of the garment, the style in which it has been cut and tailored, and the fabric of the garment. This kind of design is often the subject-matter of IP disputes involving designer clothes. For instance, lehengas designed by Rohit Bal do not have any ‘drawing’ element, and it is the lehenga, the item itself, on which IP protection is sought. Anybody who copies the style of the lehenga would be fraudulently imitating Rohit Bal’s lehenga. So if Rohit Bal designs a particular lehenga style originally in pink, and a person creates a knock-out of that lehenga in black, this would still amount to piracy of Rohit Bal’s designs. This is because under the Designs Act, a ‘design’ also includes the “shape, configuration, pattern, ornament” of any article. In cases of design infringement of clothes relating to their shape/style etc., it may become very difficult for a judge to decide where to draw the line between ‘permissible copying’ and design piracy. Designer clothes are often improvisations of existing styles of clothes. Therefore, another issue which arises is whether every design is ‘original’ enough to merit protection? To illustrate, a ‘Kerala Kasavu’ sari is a handwoven cream sari with a golden border, worn traditionally by women in Kerala. There are designer Kerala Kasavu saris also available. In designer Kerala Kasavu saris, the basic design (cream sari with a gold border) remains the same. Therefore, the creativity or originality of the designer will perhaps lie merely in the design of the blouse or any print added to the sari. Should such designer saris, which are themselves based on an existing design (namely, the kerala kasavu sari), be afforded copyright protection under the Designs Act? Secondly, if someone designs the same blouse (as the original designer) for a kerala kasavu sari but adds a different ‘print’ to the sari, will this amount to design piracy of the original design? In the absence of a landmark judgment in India on the issue of design piracy involving designer clothes, it is best to assume that only obvious/identical imitations or imitations with minor differences (such as colour) would be considered design piracy.
Laws protecting fashion designers In the UK, the original drawing/graphic work on an item and 2-D items such as textiles are protected under the UK Copyright, Designs and Patents Act 1988; the copyright protection under the 1988 Act subsists during the life of the copyright owner and for 70 years thereafter. Similarly in the US, fabric prints are protected for a term spanning the life of the designer plus 70 years. Another form of IPR in the US is ‘design patent’ which protects the “ornamental design of a functional object” such as ornamental design of a mobile phone, watch, jewellery, etc. The term of protection for design patents is 14 years; however, it is difficult to obtain design patents for clothes. Interestingly, in 2012, the Design Piracy Prohibition Bill (also known as the ‘Fashion Bill’) was introduced in the US Congress which aimed to provide protection to fashion designs for a term of three years. However, the Bill was not subsequently enacted. Indian fashion designers have become more vigilant about copycat designers and have taken to shaming those who steal their designs. No doubt, designers invest significant time and resources in designing and marketing their clothes, and incur huge economic losses due to rip-offs of their work. A sui generis (of its own kind) protection for the IP of fashion designers, similar to the Fashion Bill in the US, could be a good way to protect fashion designers’ rights in India. A law exclusively for fashion designers’ IPR can also clarify the murky issues in design piracy and infringement of fashion designs relating to clothes. (The author is a research fellow at Centre for WTO Studies, Indian Institute of Foreign Trade. She is also a volunteer at Strategic Advocacy for Human Rights (SAHR). Views expressed are personal.)
India may get Intellectual Property Exchange soon
The Intellectual Property Exchange will be developed under Harsh Vardhan’s science and technology ministry through the National Research Development Corporation (NRDC)
India will soon have an Intellectual Property (IP) Exchange, joining the league of countries like Hong Kong and United Kingdom, where individuals and commercial entities both in India and overseas will be able to buy and sell intellectual property rights across various sectors. The exchange will be developed under the ministry of science and technology through the National Research Development Corporation (NRDC). The idea of setting up a patent exchange similar to those in Hong Kong and the UK was floated in the ministry around two months ago. The project has already got in-principle approval from the science and technology ministry. Intellectual property is the product of human imagination, creativity and inventiveness and comprises inventions, designs, brands and artistic works. Similarly, intellectual property rights allow a person or company to have exclusive rights to use their own plans, ideas, or other intangible assets exclusively at least for a specific period of time. These rights can include copyrights, patents, trademarks, and trade secrets. They are classified as patents, design, trade mark and geographical indication. “We have been mandated with the task of creation of the proposed IP exchange and the process will take around 8-9 months for collecting data and setting up the exchange. We are already undertaking exercise of collecting necessary data and information on patents filed worldwide on multiple technologies, predominantly on agriculture and allied sectors,” said NRDC chairman and managing director H. Purushotham. In India, IP rights are given by Controller General of Patents, Designs and Trademarks (CGPDTM). According to its annual report of 2015-16, India witnessed about 30% increase in filing of intellectual property applications compared to previous years. In 2015-16, 3,41,086 applications were filed for IP rights as against 2,35,306 in 2011-12.
Purushotham says, “The idea is to exploit the commercial viability of patents in India which usually expires as they don’t get platform to sell.” He said the country has a repository of around 2 lakh patents every year that have potential for commercialization. “It is a good move, much like the stock exchange but much will depend on its practical implementation. It will help to cut down bilateral and arbitrary negotiations between parties, bring transparency and simplify the buy/sell/license process. A few problems like tracking and verification of patents being bought, sold or licensed and their final use however may stand in the way,” said Vaibhav Vutts, founder of Vutts & Associates, a Delhi-based boutique IP firm. According to India Brand Equity Foundation’s Innovation and Patents report released in June, India’s research and development spend is estimated to reach $71.5 billion by 2016 from $66.49 billion in 2015. In 2015, India became the world’s sixth largest annual research and development spending country, accounting for 3.53% of global R&D expenditure. R&D spending in India is anticipated to grow from 0.9% to 2.4% of the country’s GDP from 2014 to 2034 respectively. The number of multinational corporations with R&D centres in India has grown at a CAGR of 4.57% from 721 in 2010 to 943 in 2016. During 2010-16, the workforce in MNC R&D centres increased at a CAGR of 10.08% and reached 363,000, which is estimated to further increase to 387,000 by 2017 in India.
Mother Teresa’s sari gains trademark rights
Mother Teresa is known, primarily, for her lifelong dedication to helping the poor, which earned her the 1979 Nobel Peace Prize. Secondly, she is known for her blue and white striped sari that she apparently bought the same day in 1948 that she left her Kolkata-based convent to help those in need. A day later, she got the saris blessed by Father Van Exem at the Sacristy of the Convent Chapel: this was the dress she was to wear thereafter.
This week, news has been discovered that the Indian trademark registry has registered the characteristic blue and white stripes, preventing Indian organizations from using it on attire or items of stationary without permissions from the Missionaries of Charity. The saris with blue stripes are now woven by leprosy patients at the Gandhiji Prem Niwas, run by the Missionaries of Charity in Titagarh, North 24-Parganas. Nearly 4,000 saris are woven and supplied to Kolkata every year. These are then distributed to nuns across the world.
The application for trademark for use of the blue and white stripes began in December 2013 for stationary items, followed by November 2015 for charitable services. The final, trademarks for stationary and textiles, were registered in September 2016, hours before Teresa was declared a saint by Pope Francis. It has been suggested that incidents of people making money by using the blue and white pattern recently came to the notice of the Missionaries of Charity, thus a decision was taken to raise awareness about it. “Though the patterns were declared a trademark 10 months ago, the Missionaries of Charity wasn’t too eager to highlight the fact as it isn’t too keen on punishing people,” said Biswajit Sarkar of Biswajit Sarkar Advocates — IP Attorneys, a law firm associated with the organization when speaking to . But things changed after stray incidents of people making money by using the pattern emerged. “In one incident, somebody misused the trademark and received money from a donor in Mumbai. There are also people selling mementos and memorabilia with the trademark and buyers feel that the proceeds are going to the Missionaries of Charity. We have also come across a book with the trademark on the cover, misleading readers to believe that it has something to do with the organization. We simply want to protect the identity of the organization,” Sarkar added.
The charity wants to ensure Mother Teresa’s name and memory is not exploited for commercial purposes, and while this is currently just in India in terms of the sari color, it is hoped they will push for this in more countries around the world to protect her name as well.
McAfee settles trademark dispute with Intel:
The creator of the McAfee antivirus company, John McAfee, has settled his trademark dispute with Intel. The case was dismissed on July 5, at the US District Court for the Southern District of New York. According to the order of dismissal, each party will bear its own costs for the case. The case arose in September 2016 when McAfee brought a trademark non-infringement against Intel. McAfee sued Intel over the right to use his name, claiming that it didn’t infringe Intel’s trademark rights in the McAfee name. Intel acquired McAfee in 2010 and renamed its security products Intel Security in 2014. Intel also owns a trademark for the term ‘McAfee Security’, which was registered at the US Patent and Trademark Office in June 2004. John McAfee joined technology firm MGT in May 2016 as chairman and CEO. Plans were announced that the company was looking to change the firm’s name to John McAfee Global Technologies. Intel argued that McAfee and MGT had diluted its trademarks, infringed its common law trademarks and had violated competition law through unauthorised use of its trademarks without the company’s permission. Intel added that the use of the term ‘McAfee’ in a business name and trademark in connection with anti-spyware solutions “will infringe on and dilute Intel’s famous McAfee trademark”. John McAfee has now agreed not to use his own name in his firm’s name.