In 2018, Christian Louboutin’s iconic red sole design faced infringement in India, sparking a legal battle that highlighted the critical importance of design protection in the fashion industry. This case highlighted the challenges designers face in safeguarding their unique creations in a rapidly evolving market. The fashion industry is a dynamic and competitive sector where creativity and innovation are paramount, with designers continuously striving to produce unique and captivating pieces.

Fashion design occupies a unique space within intellectual property law. Unlike traditional artistic works or inventions, fashion designs often merge functional and aesthetic elements, making them difficult to protect under conventional IP regimes. The ephemeral nature of fashion trends, coupled with the industry’s reliance on seasonal collections, further complicates the application of long-term IP protections. For instance, the case of Shantanu & Nikhil v. Mr. Mukesh P. Doshi & Anr[1], emphasized the struggles designers face in protecting their wedding dress designs from fast-fashion imitations.

This article explores design rights in the fashion industry, examining the legal frameworks that safeguard creativity while considering the industry’s unique challenges. We will delve into relevant case laws, analyze pertinent sections of intellectual property rights (IPR) legislation, and examine the legal grounds that shape the protection of fashion designs.

Constitutional Foundations of Design Protection

Constitutional Law forms basis for intellectual property rights protection including fashion design. Article 300A gives us property right and courts have interpreted this provision so as to include intellectual property rights too. This constitutional support provides a firm ground for legislation aimed at preserving works of art.

The landmark case of Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries[2], established the principle that intellectual property rights are indeed a form of property deserving constitutional protection. This interpretation was further reinforced in Entertainment Network (India) Ltd. v. Super Cassette Industries Ltd[3], where the Supreme Court emphasized the need to balance the rights of IP holders with the larger public interest.

The Designs Act, 2000: A Primary Shield for Fashion Creativity

Fashion designs get protected under Indian law primarily through the Designs Act, 2000. Section 2(d) of this act provides an all-inclusive definition of “design” and sets out factors for registration as follows:

1. Novelty or originality
2. No prior publication
3. Significant distinguish ability from known designs
4. Absence of scandalous or obscene matter

The registration process under the Act requires designers to submit detailed applications, including detailed representations of their designs. However, this time consuming process makes the designers difficult to protect their designs due to the rapid growing fashion. The experiences of renowned designer Manish Malhotra in registering his bridal collections highlight the procedural delays and underscore the necessity for more expedited processes tailored to the fashion sector.

Challenges in Applying the Designs Act to Fashion

1. Registration Process – Fashion designs are often outdated by the time the lengthy registration process is completed and protection is granted. This misalignment with fashion’s seasonal nature calls for streamlined procedures or provisional protection measures that better accommodate the industry’s unique temporal dynamics.
2. Functionality vs. Aesthetics- The dual nature of many fashion items which serve both functional and aesthetic purposes complicates their protection under design law. The principle established in Amp Inc. v. Utilux Pty. Ltd[4], by the UK House of Lords, which held that purely functional designs are not protectable, creates a challenge in delineating the protectable aspects of fashion items.
3. Trends and Common Design Elements – The fashion industry’s reliance on trends and common design elements poses another challenge. The Bombay High Court’s decision in Cello Household Products v. Modware India[5], emphasized that common trade variants cannot be monopolized through design registration. This ruling necessitates a delicate balance between protecting unique creations and allowing for the natural evolution of fashion trends.[6]

Copyright Protection: An Alternative Avenue

Fashion designers are increasingly turning to copyright law for additional safeguards because to the limitations of design protection. Original artistic works, such as fashion sketches, patterns, and even three-dimensional items, are protected under the Copyright Act of 1957.

The Delhi High Court’s recognition of copyright protection for fashion designs in Rajesh Masrani v. Tahiliani Design Pvt. Ltd[7], marked a significant development in this area. Internationally, the U.S. Supreme Court’s decision in Star Athletica, L.L.C. v. Varsity Brands, Inc.[8] set a precedent for recognizing the separability of artistic elements in fashion designs, potentially influencing global perspectives on fashion copyright.[9]

Trademark Law: Protecting Brand Identity

Trademark law plays a important role in safeguarding brand identities within the fashion industry. The Trade Marks Act, 1999, gives right to fashion houses to protect their logos, brand names, and distinctive design elements that serve as source identifiers.

The landmark case of Christian Louboutin SAS v. Abubaker & Ors[10], where the Delhi High Court recognized the distinctiveness of Louboutin’s red sole trademark, illustrates the potential of trademark law in protecting unique design features. However, the principle established in Amritdhara Pharmacy v. Satya Deo Gupta,[11] underscores the need to balance brand protection with fair competition, cautioning against monopolistic practices in trademark enforcement.[12]

The Intersection of Design Rights and Competition Law

The protection of design rights must be carefully balanced against the principles of fair competition. Section 15 of the Competition Act, 2002, which prohibits the abuse of dominant position, could potentially apply to overzealous enforcement of design rights in the fashion industry.

In Shri Lal Mahal Ltd. v. Calcutta Discount Co. Ltd[13], the Supreme Court stressed the need of striking a balance between intellectual property rights and the ideals of free competition. In the context of the fashion business, where it is frequently difficult to distinguish between inspiration and violation, this notion is still quite applicable.

International Perspectives and Harmonization

The global nature of the fashion industry necessitates international harmonization of design protection. The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) sets minimum standards for IP protection, including industrial designs. Article 25.2 of TRIPS specifically addresses the protection of textile designs, providing a framework for international cooperation in this area.

The Delhi High Court’s reference to EU design law principles in Reckitt Benckiser Inc. v. Wyeth Ltd[14], highlights the growing trend of considering international standards in design protection cases. This approach fosters a more globally consistent interpretation of design rights, crucial for an industry that operates across borders.

 Emerging Trends and Future Directions

1. Digital Designs and Virtual Fashion – The rise of digital fashion and virtual clothing presents new challenges for design protection. As designs increasingly exist in digital form, questions arise about the applicability of traditional IP frameworks. The emergence of non-fungible tokens (NFTs) offers potential new avenues for digital design protection, necessitating legal adaptation to these technological advancements.
2. Sustainable Fashion – The growing emphasis on sustainable and recycled fashion raises complex questions about the scope of design protection for up cycled or repurposed designs. This trend calls for new legal frameworks that can accommodate and encourage eco-friendly innovations while still protecting original creativity.
3. 3D Printing Technology- The advent of 3D printing technology poses significant challenges for design protection, as it facilitates easy replication of physical designs from digital files. Legal responses need to evolve to address this technological advancement, potentially exploring new forms of digital rights management or expanding the scope of design protection to cover 3D-printable files.

Conclusion: Balancing Protection and Innovation

The protection of design rights in the fashion industry requires a delicate balance between safeguarding creativity and fostering innovation. While the current legal framework in India, anchored by the Designs Act and supported by copyright and trademark laws, provides a foundation for protecting fashion designs, it faces challenges in keeping pace with the industry’s rapid evolution.

Moving forward, there is a need for a more tailored approach to fashion design protection that considers the industry’s unique characteristics. This could involve:

1. Streamlining the design registration process to better align with fashion seasons.
2. Developing clearer guidelines for distinguishing between protectable design elements and common industry trends.
3. Exploring sui generis protection for fashion designs that fall between traditional categories of IP protection.
4. Enhancing international cooperation to address the global nature of fashion design and counterfeiting.
5. Encouraging the adoption of technology-driven solutions, such as blockchain, to provide real-time tracking and authentication of fashion designs.

By adapting and refining the legal framework, we can ensure that the vibrant creativity of the fashion industry continues to thrive while providing designers with the protection they need to innovate and succeed in a fast-paced, competitive market. This balance will not only protect the rights of designers but also promote a culture of innovation and originality in the fashion industry, ensuring its growth and sustainability for future generations.

AUTHOR: Om Narendra Singh (2nd Year law student of B.com LL.B), Student of Lloyd School of Law

[1] Shantanu & Nikhil v. Mr. Mukesh P. Doshi & Anr., CS (COMM) 150/2015 (Del. H.C. 2015).

[2] Bishwanath Prasad Radhey Shyam v. Hindustan Metal Indus., (1979) 2 SCC 511.

[3] Entertainment Network (India) Ltd. v. Super Cassette Indus. Ltd., (2008) 13 SCC 30.

[4] Amp Inc v Utilux Pty Ltd [1972] RPC 103.

[5] Cello Household Prods. v. Modware India, (2017) SCC OnLine Bom 8266.

[6] https://www.lakshmisri.com/newsroom/news-briefings/design-each-component-of-design-need-not-be-tested-for-originality-and-novelty/

[7] Rajesh Masrani v. Tahiliani Design Pvt. Ltd., 2009 (39) PTC 21 (Del).

[8] Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017).

[9] https://depenning.com/blog/intellectual-property-rights-in-fashion/

[10] Christian Louboutin SAS v. Abubaker, 250 (2018) DLT 475.

[11] Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449.

[12] https://lawdit.co.uk/readingroom/intellectual-property-in-the-fashion-industry

[13] Shri Lal Mahal Ltd. v. Calcutta Disc. Co. Ltd., AIR 1967 SC 1335.

[14] Reckitt Benckiser Inc. v. Wyeth Ltd., (2013) 54 PTC 90 (Del).