If the inventions and patents defined the industrial revolution in the textile and fibre industry, the branding of the stitching and garment kick started economic revolution of selling the branded cloths to the customers. Establishment of brand names like, Raymond, Grasim, Vimal, to name few over the years has generated a lot of intellectual capital for these well-known companies. Lacoste, Marks & Spencer, Zara, Promod, Benetton, and Levi’s to name few are some of the foreign Brands Houses either have invested or have started their operations in Indian market.
Since the time man innovated techniques of ginning and develop of new textile fibres the textile industry progressed rapidly, mainly in three sectors clothing, home décor fabrics and textile industry technology. Change from nylon to Lycra has revolutionised women wear styles and provided a boost in the SME sector growth in ready to wear garments. Apart from innovations in machines and equipment, the textile industry has grown in myriad directions like branded products, fashion designers premium products. Use of flame retardant Probans and Nomex hoods have provided safety to the firefighters around the world. Even the claims for development of virus resistance cloths to ward off Covid threats to doctors and other health workers are been made in the recent corona pandemic situation. In the fast changing fashion environment, new and innovative idea that fires development of this industry is gaining pace to keep the clothes elegant and comfortable to wear. With craze for branded goods growing amongst the masses, the competition to build and jealously guard the brand reputation in clothing and styling industry is gaining limelight.
Garage stitching moving to branding the products
New generation of style icon are looking for greener pastures than the traditional garage tailors. Newly acquired brand savviness amongst the fashion designers is moving towards branding of their product rather than keeping it as low-key affair amongst the local customers. These new stylists company are moving their focus from the B2B market to B2C market. The need for developing an attractive brand name and a creative tag line is acquiring prominence. The designers who earlier shy away from acquiring a trademarks for their creative products are now keeping tab on the legal practitioners to guide them to protect their brand names /trademarks. However, the growth of the Indian brands in the clothing /stitching industry remained low-key affairs perhaps due to Indian customer’s fascination for the well-known foreign brands.
Stitching Logo /Signature on branded clothes
Initially meant for cloth marking, the computerised machine embroidery marking is now being extensively used for the product branding when adding a logo to stitched personal wears or designers attire. Of late, innovative embroidery is a high quality method of branding, that provides a classy feel and finish to stitched products. Thus acquiring a brand can be a strategic move that can make a real difference to market display the branded product. Adding an embroidered logo to products such as clothing is now used as a branding style for merchandise or gift option. Distributing high quality branded t-shirts with embroidered logo during national of international events sports events is an impressive way of to create brand awareness to attract potential customers. No doubt, the premier brands are now being recognised as style statements of celebrities and Icons of the present era. The differentiated colour pattern and stylised monogram is the differential that induce the desire and feel in the customer to have “I want to buy this brand” feeling. The stitch model companies have acquired may trade logos under one brand to enrich their IP capital. The mad race for looking out for creative and stylish logo is on. Every time, when a new product is launched, a new style statement appears on the logo to give honest and simple message to attract the customer.
Dilution of reputation
What amounts to dilution of reputation remained a difficult question before the courts but courts were harsh on the unauthorised users of trademarks. This in one way supports the right of the trademark owner to restrict and control the movement of goods protected under the registered trademark. In Levi Strauss Vs Tesco case, for example when Levi refused to allow the supermarket chain Tesco to sell Levi jeans alongside groceries, as it would undermine the image of the brand, the TISCO bypassed the objections by obtaining genuine LEVI 501 Jeans from suppliers outside the European Economic Area (EEA). In fact, TISCO drastically reduced Jeans price at their UK stores, which was far less than actual price of jeans, sold in authorized Levi stores. Levi Strauss rightfully instituted infringement proceedings in the UK High Court of Justice alleging that the import into, and subsequent sale of jeans within, the EEA constituted an infringement of their trademark rights. The court restrained TISCO and held that such use amounts to infringement of trademarks right even where the defence of exhaustion of right is raise. The court ruling was based on the premise that such use would amount to undermining the image of the Levi brand.
Trademarks with reputation and brand
There exist is no agreed definition of ‘a brand’. A brand is invariably understood to transcend the product with which it is associated. A brand is unique and lives in perpetuity or until its creators decided to discontinue its use or change its character altogether. The products can be copied but brands cannot be appropriated from public domain. The proprietor is nurturing the brands as such for marketing their old or new products. The question before the IP professional is not whether they belong in the public domain, but how the brands may be protected through trademark registration from unauthorised use by third parties. The possibility of obtaining trademarks registration for reputed brands is cannot be ruled out but the trademarks law demarcate the protection accorded to trademarks with reputation as brands in two key areas. Firstly, the TM law offers protection to trade marks with a reputation against registration by third party. Secondly, third party use of an identical or similar mark on similar or dissimilar goods is prohibited under the law. Courts take cognizance where such use would take unfair advantage of, or is detrimental to, the distinctive character or reputation of the earlier trademark. Specially in cases where the question arises of the extent to which registration will protect a trade mark against use of a sign which may conflict with it in such a way as to undermine the brand values either through ‘dilution’ or ‘tarnishment’ courts favours the earlier trade mark with reputation. Courts presumes that the conflict between a registered trade mark with a reputation and the use by a third party of an identical or similar sign would subsists even if the average consumer is not confused as to the origin of the goods and services sold under the conflicting sign. It will suffice if the consumer link the registered mark and the sign in a way that the value of the former is undermined.
Copycat fights in India
Designer’s world is rife with accusations and counter accusations for copycat fights. Be it copycat version of a “blue poncho and multi-hued pants” used by stylist Aki Narula, which Rani Mukherjee wore in Bunty Aur Babli or a “white jumpsuit with ruffles on the sleeves” created by Rahul Mishra allegedly copied by Vero Moda. Indian designers do send notices to the copycats but the question before them that always remained unanswered is how best they can protect their creative designs from copying. Is the protection under IP laws good enough to stop copycats? Whatever be the reason the designers are now actively strengthening their IP portfolios using every possible IP route such as designs registration, trademarks registration, protection of brand name or logo ,copyright of designers sketches and so on. It is not surprisingly to find Indian fashion designers like Rohit Bal, Sabyasachi Mukherjee, Anita Dongre rushing to register every couture design they plan to show case on the ramp shows. They are also taking active steps to seek court interventions to claim damages from the designers who plagiarize their creative designs. The law suit filed by Suneet Verma against Aki Narula for seeking 2 crores damages for copying his creation took a ugly turn when Narula filed a defamation suit against Suneet. Most of the designers feel that once they have copyright protection they are safe from copycats but what they do not realise that copyright protection has possibilities for copycat take shelter under the guise of fair use. Moreover, the copyright protection over fabric prints, pipping designs and lace patterns is not available under copyright law and so is the cut or shape of three-dimensional garments no permitted class under the copyright.
How to tackle copycats?
Parliament decision not to grant full coverage of copyright protection to the designer’s creation has not left the fashion industry without protection. A maker of designers garment or costume can obtain trademark protection for signature features of the clothing. A designer who creates an original textile design such as pattern as placed on a bolt of cloth, or anything made with that cloth but the fabric producer rather than the garment or costume designer can make such claims. Thus ordinarily when the two-dimensional design is applied to the textile fabric and before the garment is cut from the fabric, design protection under the class of textile design can be sought or a possibility of copyright protection so long as the designs is two dimensional cannot be ruled out.
Copyright or design for designer’s creations: Recent US development !
In Us Supreme Court question relating to copyright of the cheerleaders dress designs and orientation came up for resolving an plagiarism dispute between STAR ATHLETICA, L. L. C. v. VARSITY BRANDS, INC. [799 F. 3d 468, affirmed]. The task before judges was twofold. First to find an interpretation of the reach of copyright act to cover the cheerleaders dress designs and orientation. Second was to clearly lay down a rule to decide when such right subsists in such cases. This case largely hung on the answer to the question whether certain arrangements of lines, chevrons, and colourful shapes on the front of these uniforms claimed by Varsity Brands could be protected under copyright law. Task of the court was to “determine whether the arrangements of lines, chevrons, and colorful shapes appearing on the surface of respondents’ cheerleading uniforms are eligible for copyright protection as separable features of the design of those cheerleading uniforms.” The US Supreme Court ruled in favour of Varsity Brands holding that copyright law protects the basic decorative elements in cheerleader uniform designs. It took a long spell of seven years of a protracted legal battle to resolve this issue. In a 51-page majority opinion, penned by justice Clarence Thomas, the court observed that since the uniforms are similar to a t-shirt, paper towels, car, or other useful real-world items that serve a function they are not permitted under the copyright law. However, the Varsity Brand designs can be conceptually separated from the uniforms themselves. In simple words if you can imagine design separate from the physical uniforms, these designs can qualify as two-dimensional works of art and thus fall within the reach of the copyright law. The court held that
“In sum, a feature of the design of a useful article is eligible for copyright if, when identified and imagined apart from the useful article, it would qualify as a pictorial, graphic, or sculptural work either on its own or when fixed in some other tangible medium.
This US Supreme Court decision though laid to rest controversy over the copyright of the Varsity Brand Designs used in costumes meant for cheergirls in particular but it also cleared the mist over the existence of a design as a two dimensional artwork to qualify for protection under copyright as well. This decision would give boost to the Intellectual capital of the designers engaged in creative designing of costumes and clothes. It well known that copying of designers creations is rampant and protection is limited. Varsity Brand now have 200 copyright registrations for two-dimensional designs consisting of various lines, chevrons, and colourful shapes—appearing on the surface of the cheerleading uniforms that they design, make, and sell. This growth of the IP capital would be give the necessary push the designers now to seek more such registration under the copyright law.
Position of fashion Art Work under Indian Law
The position of copyright protecting for such designs in Indian context is little different as statutory limit of ‘50 copy’ comes into play if the copyright in design which is capable of registered is not registered under designs Act [Section 15(1) of the Copyright Act,1957]. If such a design is already registered under the Designs Act then the copyright will not subsist according to Section 15(1) of the Copyright Act,1957.
- Special provision regarding Copyright in designs registered or Capable of being registered under the Designs Act, 2000 (16 of 2000)
(1) Copyright shall not subsist under this Act in any design, which is registered under the Designs Act, 2000 (16 of 2000).
(2) Copyright in any design, which is capable of being registered under the [Designs Act, 2000 (16 of 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 licence, by any other person.
Therefore, in Indian context any design or work of art or expression can be registered as a copyright only if the same brought in public domain with the purpose of limited production (not more than 50 pieces).The stylist designers in Indian get copyright protected on the pretext that they normally sell their customised product to limited premier customers only. However, their registered product find the local market through rampant copycats at even big departmental stores. In the recent controversies over plagiarism in the fashion industry top Indian designers like Tarun Tahiliani, Rohit Bal and Sabyasachi Mukherjee has complained to FDCI that work has been replicated with cheap designs which are available in the big stores/ boutique designers for a bargain price. However, the top designer laments the lack of proper action against these rampant copyright violations.
Despite the paradoxical nature of the designers creation, which at time elude the known type of protection under the law the fashion industry has thrived against all these odds. Designers have been contributing immeasurably to artistic and personal self-expression through clothing meant at primary level for premium celebrities and Icons. Over the years, the intellectual capital of the textile and fabric industry has grown to cover traditional fields such as patents, designs trademarks and non-traditional areas like copyright and Geographical indications. The basic to stay ahead and gain competitive edge over the competitors is to innovate and develop original creative expressions. The existing big brands have jealously protected though use of tools of the intellectual property to leverage their competitive edge over span of so many years. They have built up tremendous value of intellectual capital in the textile and fabric industry. However many of the small and medium-sized enterprises (SMEs) in the fashion industry pay either no or very little attention to protect their intellectual assets like designs and trademarks. There seems to be no doubt in the current cutthroat competitive business environment that the innovation and original creative expressions in fashion industry are essential to remain competitive. According to recent reports those textile and fabric SME are only closing that are not innovating and keeping pace with new developments in the industry. Though it may take some time to finally know the implications of Varsity Brand case in Indian context, but it cannot denied that the creators of designers goods that include artistic elements in addition to a clear utility like a designers costumes do have a possibility of obtaining a copyrights protection for their innovative designs in US. Moreover, US courts are now ready to apply the principle laid down in Varsity Brand case in other design cases as well. For example “Tear drop bulb” design case. Nonetheless, one thing is certain that even if the courts verdicts may go against the complaining trademark or design proprietors, the fear of litigation or even the notice of litigation would have a chilling effect by fending off unscrupulous copycats’ ventures. This in fact is opening up a new frontier of protective action by the textile designers against allusive use, analogous use of designs or trademarks logos against the lookalikes or copycats. Needless to add that number trademarks and design registration applications in this class have grown substantially in past few years and so are the infringement actions related thereto. The new brand of Indian fashion designers at times argues that with meagre financial resources it is difficult to venture into the cumbersome and expensive process of registering Trademarks in India. It well known that copying of designers creations is rampant and protection is limited. An expert advice would certainly help the designer IP creators to take best advantage of their brand values.
Article by DPS Parmar
1st published on Lexology.