2. INDUSTRIAL DESIGN
• Protected under the Designs Act, 2000
• Protects external shape, configuration,
surface pattern or ornamentation of
an industrially reproduced article
• New and novel
• Judged solely by the eye
• Non functional
3. NEW AND NOVEL
• Novel”: Means that it must originate from the
creator
• “New”: Not identical to a previous design
• Pattern made up of old features but resulting
combination with strikingly different appearance
can be novel
• Distinguishable from known designs or
combination of known designs
• But over the years, the test has become NEW
AND NOVEL
5. WHY REGISTER YOUR DESIGN?
• Statutory right – accrues only on registration – territorial
• Right to prevent others from producing, importing, selling or
distributing products having an identical appearance or a
fraudulent or obvious imitation
• Monopoly Period of 10 years- extendable by 5
• Gives you a Unique Selling Point (USP)
• Is an asset & can be licensed
6. DESIGNS CAN BE 2D OR 3D OR A COMBINATION
•Surface pattern
(2D pattern, composition of lines,
colours)
•Cut of the garment (3D
features of shape, configuration)
7. DESIGN & FUNCTIONALITY
•The intent of the Designs Act is to
protect shapes & not functions
•Designs with functional features
•If design is solely dictated by
function, it will not be registrable
8. THE DEGREE OF NOVELTY REQUIRED
•“New or original” does not simply mean different.
Infact it should be new and original.
•A trade variant of an old design does not make it
novel
•Substantial novelty required
Le May v. Welch: “It cannot be said that
there is a new design every time a coat or
waistcoat is made with a different slope or
different number of buttons…to hold that
would be to paralyse industry.”
9. LIMITATIONS OF PROTECTION OFFERED
BY DESIGNS LAW
• A design needs to be registered for any kind of
rights to be claimed over it – it may not be
feasible to register every design that is created by
designers
• A design right cannot be claimed over a design
that has been published/disclosed to the public
• A design right will only be granted on the
fulfilment of various criteria like “novelty”, eye
appeal and non-functionality
10. ENFORCEMENT
• Identical design or any fraudulent and
obvious imitation;
• Import for sale
• Publishing or exposing the article which is
known to be pirated
• Injunction and damages
11. SECTION 15(2), COPYRIGHT ACT, 1957
• Copyright does not subsist in design registered
under the Designs Act
• Design capable of being registered, but which has
not been so registered enjoys copyright protection
• Copyright shall cease as soon as any article to
which the design has been applied more than
FIFTY TIMES by an industrial process
12. THE COPYRIGHT/DESIGN OVERLAP
• Fashion design lies at the cusp between “creativity” and
“industrial manufacture”
• Great design has the quality of transforming “wearable
apparel” into “wearable art”
• Thus, the distinction made by law between “purely
artistic works” and works that have been
commercialised can be problematic in many cases
• There will be works that are both protectible under
copyright law as well as under designs law
• Indian law has tried to resolve this by the provision of
Section 15(2), Copyright Act, 1957
13. Copyright & Designs Law
• Designs that are not commercialised (i.e., not produced
more than 50 times), enjoy full copyright protection
even if not registered as a design
• It may be argued that a design that has been
commericalised, may be capable of protection under
Copyright Act on the basis of the underlying artistic
works (i.e., the sketches, engravings, prototypes, etc.)
though Section 15 (2) remains a bar
14. Copyright & Designs Law
• Important to maintain documentation and
records at every stage of product design and
development as this may help in claiming
protection for a design under the Copyright
Act
• If you think of getting into mass production of
a unique design, file a design application as
that would provide you stronger protection &
complete monopoly
15. DESIGN Vs. COPYRIGHT
DESIGN COPYRIGHT
Need to register to Subsists inherently
claim protection
Has to be “NEW” No requirement for
novelty
Maximum 15 years Life of author + 60 years
Only in respect of Is not goods specific
goods registered for
16. THE DESIGN DEVELOPMENT PROCESS
• Hi-fashion furniture/metal ware:
2 D drawings Prototype 3 D model Silver
prototype Final 2 D drawing
• Apparels:
Sketch Dress-making pattern
Prototype/sample garments Finished garment
17. Successful copyright infringement claims
Ritu Kumar’s cases
Ritika Limited v.
Ashwani Kumar
Ritika Limited v. Nina
Talukdar
Original
Original
Ritika Limited v. Sajid
Mobin
Copy Copy
18. YSL v. Ralph Lauren
• YSL was awarded
damages for Ralph
Lauren’s
infringement of the
design rights in YSL’s
design of its tuxedo
dress
19. Example of infringement of registered
design
• Birkin v. Pratt
• Lace pattern was
held to have been
infringed
20. INDIAN LANDMARK DECISIONS
• Microfibres Case [2006(32) PTC 157]
– Upholstery designs
– Intention
– Not Artistic work
– Design registration
– More than 50 copies
– No injunction
21. • Tarun Tahiliani Case [Case No. 183 of
2007]
– Haute Couture;
– Diffusion;
– Pret-a-porter
– Accessories
– Not mass production
– Distinguished Microfibres
– Injunction granted
23. What to do when licensing a design
• A registered design can be licensed to exploit
markets or commercialise it on a scale beyond
the resources of the author
• Essential to specify in the license- the term,
territory, amount of royalty & type of products
for which design can be used by licensee
