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Premium member Presentation Transcript Slide 1: IP Protection of Industrial Design By Dr. Tabrez Ahmad Friday, October 28, 2011 Dr. Tabrez Ahmad http://technolexindia.blogspot.com 1Designs: Designs Design As per Copinger and Skone James on Copyright, a design is, in broad terms, the plan or scheme for the appearance of an article (or a part of an article). It primarily concerns with what an article looks like or is intended to look like. It is not concerned with how an article performs its function . The design of an article may be recorded in any form including the written description, sketch, drawing, photograph or it could actually be embodied in the article itself. “Design” has also been defined as the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article. Copinger & Skone James on Copyright, 15th Edn., Vol. 1, pg. 730 Friday, October 28, 2011 2 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comInfringement : Infringement Infringement in the context of Indian Textiles, Apparels and Life Style Industry: Indian Textiles: If artistic patterns are drawn up on a piece of cloth to be used for any purpose, including but not limited to for instance, making of garments, bed sheets, sofa covers, table cloths, etc., then the artistic patterns printed on the piece of cloth are protected as copyrights. On the other hand, if a designer of clothes creates a new pattern of garment to be used as a fashionable attire, then the sketch/ drawing that is drawn of the pattern of the garment is protected as a copyright. Friday, October 28, 2011 3 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comInfringement : Infringement However, once the idea of the creative pattern is implemented on the piece of cloth, then the same may be protected as a design right. If, the intention of the designer is to ensure that only one piece of the garment is manufactured, then the same could also be protected as the artistic work imprinted on the piece of cloth having copyrights. Friday, October 28, 2011 4 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comInfringement : Infringement Alternatively, if the designer’s intention is to produce several thousands of garments in different scheme of colours , etc., then the intention of the designer is to use the said design in the industry. Accordingly, the latter form of use of the same material may be considered to be a design. There is an ongoing debate on the issue and a lot depends on the manner, in which the author of the work intends to use the work. Friday, October 28, 2011 5 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comIndian Cases: Indian Cases Friday, October 28, 2011 6 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comCases: Cases Tahiliani Design Private Ltd. vs. Renu Tandon & Anr. C.S. (OS) No. 2222 of 2008 – Before Hon’ble Delhi High Court Friday, October 28, 2011 7 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comCases: Cases Allegation that the Defendants’ garments were copies of the garments designed and crafted by the Plaintiff The said garments were supposed to be developed, designed and crafted by the plaintiff as a part of their collection for the year 2006 The Hon’ble Delhi High Court vide order dated 21.10.2008 granted ex-parte ad-interim injunction Tahiliani Design Private Ltd. vs. Renu Tandon & Anr. C.S. (OS) No. 2222 of 2008 – Before Hon’ble Delhi High Court Friday, October 28, 2011 8 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comCases: Cases Defendant served notice. Application for vacation of stay moved claiming that both designs are separate. The impugned prints are generic Jamawar Prints Matter is sub- judice – Referred to Mediation Tahiliani Design Private Ltd. vs. Renu Tandon & Anr. C.S. (OS) No. 2222 of 2008 – Before Hon’ble Delhi High Court Friday, October 28, 2011 9 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comCases: Cases Allegation of infringement of copyright as the defendant used the dress in a movie which was worn by an actress Importance of costumes worn by actors and actresses in a film play special role and serve purpose of promotion of the movie Held that all kinds of clothes worn by actors cannot be stated as Fair Use permitted under sec 52 (1) (u). Suneet Varma Design Pvt. Ltd. Vs Jas Kirat Singh Narula & Anr. [2007 (34) PTC 81 (Del)] Friday, October 28, 2011 10 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comCases: Cases Case relating to design of upholstery Plaintiff claimed to have copyright in the artistic work applied to upholstery design Did not have a registered design however they claimed a copyright in the drawings Microfibres Inc vs. Girdhar and Co. and Ors. : 2006(32) PTC 157 (Del) Friday, October 28, 2011 11 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comCases: Cases Question was whether without a registered design, the plaintiff could protect the same and whether the copyright was lost because of more than 50 reproduction of the said upholstery fabric design The Court although upholding that the motives etc. of the plaintiff was artistic and also holding that the defendants had copied it, on a legal and technical argument that more than 50 reproduction had been made, refused to grant injunction Microfibres Inc vs. Girdhar and Co. and Ors. : 2006(32) PTC 157 (Del) Friday, October 28, 2011 12 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comCases: Cases Plaintiff claimed an injunction on the ground that his designs of shoe soles had distinctive shape and configuration During the course of argument, it was revealed that the plaintiff himself had copied designs from Bata India Ltd. Thus Court had held that the plaintiff himself being a pirater, no injunction can be granted in favour of the plaintiff 1997(17) PTC 268: Baldev Singh vs. Shriram Footwear Friday, October 28, 2011 13 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comCases: Cases Case under the Designs Act, 2000 Plaintiff had claimed that defendants copied the design “Stylush”, “Corel” and “Ultra” in respect of bath tubs Defendant had not established that he had been selling bath tubs prior to the registration obtained by plaintiff in respect of similar designs Plaintiff had a registered design Sufficient resemblance between the two designs and the plaintiff’s design was protected Hindustan Sanitaryware & Industries Ltd. vs. Dip Crafts Industries: 2003(26) PTC163 (Del) Friday, October 28, 2011 14 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comCases: Cases Judgment of full bench of Delhi High Court Holds primarily that in a case filed for infringement of a design, the defendant would be entitled to take a defence that the registration of the design itself was incorrect Various grounds can be taken for claim that the registration was granted wrongly, namely, that the design is not new or original or unique If any of the grounds can be proved, then the fact that the design is registered by itself, does not come to the aid of the plaintiff Registration can be a proof at the first stage but it has to be established that this was not copied design and that it is a new and original Metro Plastic Industries (Regd.) vs. M/s. Galaxy Footwear New Delhi: 2000(20) PTC 1 Friday, October 28, 2011 15 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comCases: Cases Suit filed alleging infringement of design in respect of a bottle which is being used by plaintiff for packing hair oil Court found plaintiff’s bottle to be common bottle used by several other companies Bottles were held to be in use much prior to the registration of the design of the plaintiff No peculiar feature of the bottle registered as a design and the plaintiff had not pin pointed any novelty in the design of the bottle Held that for validly of the registered design there must be some novelty and originality in the design sought to be protected and it must have not been pre-published Dabur India Ltd. Vs. Rajesh Kumar & Ors 2008 (37) PTC 227 Friday, October 28, 2011 16 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comCases: Cases Suit filed for the infringement as well as passing off of design in Toy Scooter The defendant pleaded the prior publication of the design Another defense taken by the defendant was that the defendant too was having the registration of the design Court held that there were various dissimilarities in the prior published design The design of the defendant was identical to the design of the plaintiff Hence the defendant is not protected even on account of the registration having been obtained by it which admittedly is the subsequent registration Vikas Jain Vs. Aftab Ahmad And Ors, 2008 (37) PTC 288 (Del) Friday, October 28, 2011 17 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comCases: Cases Suit for infringement of a design, where the defendant had filed a cancellation petition with the Controller of Designs Proceedings pending before the controller of Design who had heard the arguments in the cancellation petition before him and the order had been reserved Defendant had also sought the transfer of the cancellation proceedings from the Controller to the Hon’ble Delhi High Court Hon’ble High Court declined to stay the proceedings pending before the Controller and to order for the transfer of those proceedings as there was no provision for the transfer of the cancellation proceedings under the Act Reckitt Benckiser Australia Pty Ltd. And Anr Vs. R. B. Impex And Ors 2008 (37) PTC 262 (Del) Friday, October 28, 2011 18 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comCases: Cases Single Judge of this Court held that once a design was registered, prima facie, it was only the registered proprietor, who could take benefit of the registered design The Court then negatived the contention that even if a false plea about the validity of registration was taken up by a Defendant, no interim injunction should be granted. The Court went on to hold that the contention that the design had no novelty was a valid defence to the Suit and could be raised to challenge the validity of the registration. It further held that this did not have any bearing at the initial stage and that these were matters to be decided on evidence. It must be mentioned that after so holding the Court, went into the merits and held that in that case it had not been shown that the design was previously published Sat Pal Singh Vs. S.P. Engineering Works - 1982(2) PTC 193 Friday, October 28, 2011 19 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comSlide 20: Faber Castell “Textliner”. A dark green body Unique cap of same colour as colour of ink Gold lettering on green body Regd design. Prior Publication could be through prior documents or some other prior user. Injunction granted Cases Faber Castell Vs. Pikpen - 2003 PTC 538 Friday, October 28, 2011 20 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comSlide 21: Suitcases made by plaintiff copied by defendant The entire range was copied Claim was based on drawings & copyright No registered design No protection granted as it is manufactured industrially more than 50 times. Cases Samsonite Vs. Vijay Sales 1998 PTC 372 Friday, October 28, 2011 21 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comSlide 22: Design of photo-frames Registered design Defendant no.2 was an employee of plaintiff Injunction granted protecting the copyright in the design of photo-frames Cases Preeti Gupta Vs. Rajendra Prahladkar 2002 PTC 64 Friday, October 28, 2011 22 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comInternational Cases: International Cases Friday, October 28, 2011 23 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comRADELY GOWNS Ltd. v COSTAS SPYROU and BROKE v SPINCERS DRESS DESIGN Ltd.(1975) FSR 455 : RADELY GOWNS Ltd. v COSTAS SPYROU and BROKE v SPINCERS DRESS DESIGN Ltd.(1975) FSR 455 Plaintiff & defendant manufacture ladies clothing. Copyright claimed in 3 stages of Manufacturing Procedure viz., - design sketches, - cutting patterns - prototype garments Friday, October 28, 2011 24 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comRADELY GOWNS Ltd. v COSTAS SPYROU and BROKE v SPINCERS DRESS DESIGN Ltd.(1975) FSR 455 : Def argued Prototype is not work of artis . crtms . No one author is involved Cutting patterns are functional One of the sketches was copied from earlier dress Dress could not reproduce a sketch Stiffness was to be given otherwise it is not a dress Delay RADELY GOWNS Ltd. v COSTAS SPYROU and BROKE v SPINCERS DRESS DESIGN Ltd.(1975) FSR 455 Friday, October 28, 2011 25 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comRADELY GOWNS Ltd. v COSTAS SPYROU and BROKE v SPINCERS DRESS DESIGN Ltd.(1975) FSR 455 : Court Held: It is work of A.C Need not unite with one author Dress can be a 3 dimensional reproduction of a sketch Huge diff between the earlier dress and new one, hence plaintiff work is original RADELY GOWNS Ltd. v COSTAS SPYROU and BROKE v SPINCERS DRESS DESIGN Ltd.(1975) FSR 455 Friday, October 28, 2011 26 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comBRIGID FOLEY Ltd. v ELLOT (1982) RPC 433: BRIGID FOLEY Ltd. v ELLOT (1982) RPC 433 It has been observed that if there is a direct copying from a garment which one person has designed and produced by himself, doing all the cutting , stitching, and so on, there might be a case for saying that there would be a breach of doing that. Friday, October 28, 2011 27 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comBERNSTEIN v SYDNEY MURRAY(1981) RPC 303: BERNSTEIN v SYDNEY MURRAY(1981) RPC 303 The plaintiffs were owners of copyright in certain sketches for ladies’ garments in which the garments were shown as worn by ladies. They had displayed garments made from such sketches in fashion shows and shop windows. Defendants have copied the dresses produced from plaintiff’s sketches. It was held that this constituted infringement of copyright in sketches. Friday, October 28, 2011 28 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comBURKE and MARGOT BURKE Ltd. v SPINCERS DRESS DESIGNS (1936) CH D 400: BURKE and MARGOT BURKE Ltd. v SPINCERS DRESS DESIGNS (1936) CH D 400 The plaintiff’s alleged that defendants had infringed the copyright in the sketch described as “ frock being worn by a young lady ” It was also alleged that there was infringement of artistic copyrights in dresses made up by the plaintiff’s in accordance with those sketches, which dress themselves were said to be works of artistic craftsmanship It was held that there was no infringement of a sketch by a frock. Friday, October 28, 2011 29 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comIn MERLET v MOTHERCARE Ltd (1986) RPC 115: In MERLET v MOTHERCARE Ltd (1986) RPC 115 The plaintiff made a prototype baby cape for her child. The cape was subsequently manufactured by the second plaintiff. The defendants copied the plaintiff’s garments and made baby cape in accordance with the copy. The plaintiff claiming the handmade prototype garment as a work of craftsmanship it was not a work of artistic craftsmanship brought an action for infringement of copyright. Friday, October 28, 2011 30 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comIn MERLET v MOTHERCARE Ltd (1986) RPC 115: It was held that though the prototype was a work of craftsmanship it was not a work of artistic craftsmanship. It was held that in approaching the question the garment has to be considered by itself and neither as worn nor as containing a baby. No aesthetic satisfaction unless worn on the baby Action was dismissed. An appeal against infringement of certain drawings was dismissed. In MERLET v MOTHERCARE Ltd (1986) RPC 115 Friday, October 28, 2011 31 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comKOMESAROFF v MICKLE (1988) RPC 204: KOMESAROFF v MICKLE ( 1988) RPC 204 A product called (moving sand pictures) comprising a mixture of liquid, colored sands, and a layer of air bubbles encased within two glass panels was held not a work of artistic craftsmanship. They are functional – not regd design Friday, October 28, 2011 32 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comCases: Cases MERCANDISING CORPORATION v HARPBOND(1983) FSR 32 P, 32 ( Facial make-up was not held a painting within the meaning of sec 3 of the U.K. copyright act.) Friday, October 28, 2011 33 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comFord Motor Co.1993 RPC 399: Ford Motor Co.1993 RPC 399 Vehicle parts are not subject matter of design because’ they have no value in commerce except as part of a vehicle Mirrors, seats, etc., were capable of registration as substitution was possible without affecting shape of the vehicle. The distinction that seems to have been drawn is that there are several parts which are mostly hidden and never seen, such parts cannot be registered as designs. However, parts and their circuits if in drawing form are artistic works Friday, October 28, 2011 34 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comGeorge Hensher Ltd s. Restawile Upholstery 1975 RPC 31: George Hensher Ltd s. Restawile Upholstery 1975 RPC 31 Upholstered chairs & settees. One prototype was evolved – chairs were copied from it and sold Def. copied the chairs and hence the prototype Trial Court granted injunction. Appeal court dismissed the injunction. HL refused protection Friday, October 28, 2011 35 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comGeorge Hensher Ltd s. Restawile Upholstery 1975 RPC 31: George Hensher Ltd s. Restawile Upholstery 1975 RPC 31 Artistic craftsmanship need not necessarily mean “work of art”. The product may be a commercial success but need not be of Art craftsmanship Friday, October 28, 2011 36 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comMerchandising Corpn Vs. Harpbond 1983 FSR 32: Merchandising Corpn Vs. Harpbond 1983 FSR 32 Adam from the pop group Adam & Ants New look for himself with Red-Indian face markings Two red lines in grease paint, light blue line in between, heart over left eyebrow & a beauty spot Def. made a poster of it & made a portrait & superimposed new look over an old poster In infringement action court held that this is not a painting and hence not protectable. Friday, October 28, 2011 37 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comAnimal Fair Inc., Vs. Amfesco Inds 227 USPQ 817 (1985): Animal Fair Inc., Vs. Amfesco Inds 227 USPQ 817 (1985) Novelty slippers Resembles a bear’s foot or paw Slipper’s design features separate from its utilitarian features, incl. impractical width of sole, shape of sole, profile of slipper, toes which are unrelated to function and copyrightable. Injunction granted. Friday, October 28, 2011 38 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comWhat are Industrial Designs?: What are Industrial Designs? The ornamental or aesthetic aspect of an article that enhances visual appeal and differentiates product. e.g. 3-D features of shape or surface as of a perfume bottle, 2-D patterns of lines, shapes and colours as on a bed sheet. Friday, October 28, 2011 Dr. Tabrez Ahmad http://technolexindia.blogspot.com 39Criteria for Protection as ID : Criteria for Protection as ID New and Original Capable of mass production or application on an article of utility Not contrary to public order or morality The shape should not be determined merely by the functionality of the good. Friday, October 28, 2011 Dr. Tabrez Ahmad http://technolexindia.blogspot.com 40Comparison of ID against TM : Comparison of ID against TM ID Has to be integral part of product Should be original and new but need not be distinctive TM Is applied on the product but need not be embodied in it. Should be distinctive Friday, October 28, 2011 Dr. Tabrez Ahmad http://technolexindia.blogspot.com 41ID, Copyright, Patent : ID, Copyright, Patent If the article is not mass produced or the design can not be applied on a useful article, the design would be an aesthetic work, protectable under copyright. Some engineering designs may be sufficiently innovative, protectable as a patent. ID Protects commercial exploitation of the design idea through products/articles that embody it or reproduce it and not the articles themselves. Friday, October 28, 2011 Dr. Tabrez Ahmad http://technolexindia.blogspot.com 42Slide 43: “DESIGNS” Functional / utilitarian Patents Act, 1970 Purely artistic works Copyright Act, 1957 Designs with eye-appeal & capable of Industrial application Designs Act, 2000 Friday, October 28, 2011 43 Dr. Tabrez Ahmad http://technolexindia.blogspot.comDESIGN RIGHTS HAVE AN IMPORTANT ROLE TO PLAY IN THE FASHION INDUSTRY: DESIGN RIGHTS HAVE AN IMPORTANT ROLE TO PLAY IN THE FASHION INDUSTRY Friday, October 28, 2011 44 Dr. Tabrez Ahmad http://technolexindia.blogspot.comOverview: 45 Overview Prevalence of Copying in Fashion Industry Impact of Technology on Copying Where Does Fashion Fit Within Various IP Protections? Current Status of IP Protections Available to Fashion Designers Impact of Low-IP Equilibrium in Fashion Industry Where Do We Go From Here? Friday, October 28, 2011 Dr. Tabrez Ahmad http://technolexindia.blogspot.comPOSSIBLE REASONS WHY IPRs ARE THOUGHT TO BE NOT APPLICABLE TO THE FASHION INDUSTRY?: POSSIBLE REASONS WHY IPRs ARE THOUGHT TO BE NOT APPLICABLE TO THE FASHION INDUSTRY? The nature of fashion design necessarily attracts imitation – “fashion following” The transitory/seasonal nature of the fashion industry & markets The fear that protection may paralyse the fashion industry by creating monopolies Friday, October 28, 2011 46 Dr. Tabrez Ahmad http://technolexindia.blogspot.comWhy is it important for the fashion community to think of design protection?: Why is it important for the fashion community to think of design protection? Design protection is as applicable to the fashion industry as in any other business segment In the fashion industry, it is the appearance of the product that is one of the most crucial determining factors in consumer choice A unique & innovative design can thus be the USP and the linchpin for the business Friday, October 28, 2011 47 Dr. Tabrez Ahmad http://technolexindia.blogspot.comIPRs & the fashion industry: IPRs & the fashion industry If China’s strength lies in volumes, India’s lies in value addition The recognition of the role of the DESIGNER & the immense value of the INTANGIBLE that they create International experience shows that protection stimulates rather than stunt the fashion industry – eg., France Friday, October 28, 2011 48 Dr. Tabrez Ahmad http://technolexindia.blogspot.comIPRs & the fashion industry: IPRs & the fashion industry Design rights & IPRs in general, recognise & harness individual creativity & help PROFIT from it Understanding the boundaries of design protection also helps in not infringing other’s rights Friday, October 28, 2011 49 Dr. Tabrez Ahmad http://technolexindia.blogspot.comA “DESIGN” UNDER THE DESIGNS ACT, 2000: A “DESIGN” UNDER THE DESIGNS ACT, 2000 2D or 3D features of shape , configuration , pattern , ornament , composition of lines, colours Applied to any article by any industrial process or means The finished article appeals to the eye Does not include anything which is in substance a mere mechanical device Not an artistic work or trademark Friday, October 28, 2011 50 Dr. Tabrez Ahmad http://technolexindia.blogspot.comDESIGNS CAN BE 2D OR 3D OR COMBINATION OF BOTH : DESIGNS CAN BE 2D OR 3D OR COMBINATION OF BOTH Surface pattern (2D) Cut of the garment (3D) Friday, October 28, 2011 51 Dr. Tabrez Ahmad http://technolexindia.blogspot.com DESIGNS EXCLUDED FROM PROTECTION: DESIGNS EXCLUDED FROM PROTECTION Not NEW or ORIGINAL If the design has been disclosed to the public in India or elsewhere (exception is provided for exhibitions) Not significantly distinguishable from known designs or a combination of known designs Friday, October 28, 2011 52 Dr. Tabrez Ahmad http://technolexindia.blogspot.com“NEW OR ORIGINAL”: “NEW OR ORIGINAL” “Original”: Means that it must originate from the creator “New”: May involve a design which is known but is applied for the first time to that article But over the years, the test has become NEW AND ORIGINAL Friday, October 28, 2011 53 Dr. Tabrez Ahmad http://technolexindia.blogspot.comTHE DEGREE OF NOVELTY REQUIRED : THE DEGREE OF NOVELTY REQUIRED “New or original” does not simply mean different A trade variant of an old design does not make it novel Substantial novelty required Friday, October 28, 2011 54 Dr. Tabrez Ahmad http://technolexindia.blogspot.com“TRADE VARIANTS”: “TRADE VARIANTS” 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.” Thus, trifling variations/immaterial details would not be considered “NEW” Friday, October 28, 2011 55 Dr. Tabrez Ahmad http://technolexindia.blogspot.comWHAT IS “NOVELTY”: WHAT IS “NOVELTY” Strikingly different appearance Pattern made up of old features but resulting combination with strikingly different appearance can be novel Friday, October 28, 2011 56 Dr. Tabrez Ahmad http://technolexindia.blogspot.comExample of “Novelty”: Example of “Novelty” Wallpaper Manufacturers Limited case Wallpaper pattern held to be a new and original combination of known designs Friday, October 28, 2011 57 Dr. Tabrez Ahmad http://technolexindia.blogspot.comRequirement of “non-disclosure”: Requirement of “non-disclosure” Prior to application, one should be careful not to launch the design into the market The Design, prior to the filing of the application should be treated as confidential information Friday, October 28, 2011 58 Dr. Tabrez Ahmad http://technolexindia.blogspot.comWHAT IF YOUR DESIGN IS ALSO FUNCTIONAL?: WHAT IF YOUR DESIGN IS ALSO FUNCTIONAL? The intent of the Designs Act is to protect shapes & not functions But, there may be a design which also has functional features Test is to see if design is solely dictated by function. If yes, it will not be registrable Friday, October 28, 2011 59 Dr. Tabrez Ahmad http://technolexindia.blogspot.comWHY REGISTER YOUR DESIGN? – DESIGNS ACT, 2000: WHY REGISTER YOUR DESIGN? – DESIGNS ACT, 2000 • Statutory right – accrues only on registration - territorial Right to prevent all other 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 Friday, October 28, 2011 60 Dr. Tabrez Ahmad http://technolexindia.blogspot.comCLASSIFICATION ACCORDING TO GOODS: CLASSIFICATION ACCORDING TO GOODS Registration is in relation to goods Locarno classification which is followed throughout the world 32 classes Protection confined to class for which registered More than one design may be registered as a set of articles of same character Friday, October 28, 2011 61 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 62: Origin of the Locarno Classification The Locarno Classification is based on a multilateral treaty administered by WIPO. This treaty is called the Locarno Agreement Establishing an International Classification for Industrial Designs , which was concluded in 1968. This Classification is commonly referred to as the Locarno Classification. The Agreement is open to States party to the Paris Convention for the Protection of Industrial Property. How is it applied? The trademark offices of the contracting States of the Locarno Agreement are required to include in the official documents reflecting the deposit or registration of industrial designs the numbers of the classes and subclasses of the Classification into which the goods incorporating the designs belong. They must do the same in any publication which the offices issue in respect of the deposit or registration. Friday, October 28, 2011 62 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 63: Advantages and uniqueness of the Locarno Classification Use of the Locarno Classification by national offices has the advantage of filing industrial designs with reference to a single classification system. This procedure facilitates industrial design searches and obviates substantial reclassification work when documents are exchanged at the international level. Is it used in many countries? On January 1, 2009, 49 States were party to the Locarno Agreement. They have adopted and apply the Locarno Classification for Industrial Designs. Moreover, four organizations and the International Bureau of WIPO in the administration of the Hague Agreement actually use the Locarno Classification. Friday, October 28, 2011 63 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 64: What is the structure of the Locarno Classification? The Locarno Classification comprises a list of 32 classes and 219 subclasses with explanatory notes and an alphabetical list of goods in which industrial designs are incorporated, with an indication of the classes and subclasses into which they fall. This list contains some 7,024 indications of different kinds of goods. Is it updated? In order to keep the Locarno Classification up to date, it is continuously revised and a new edition is published every five years. The current (ninth) edition has been in force since January 1, 2009. The revision is carried out by a Committee of Experts set under the Locarno Agreement. All States party to the Agreement are members of the Committee of Experts. Friday, October 28, 2011 64 Dr. Tabrez Ahmad http://technolexindia.blogspot.comWHO CAN APPLY FOR A DESIGN REGISTRATION?: WHO CAN APPLY FOR A DESIGN REGISTRATION? If design has been specially commissioned for good consideration, the person for whom it is executed An assignee or exclusive licensee In any other case, the AUTHOR Friday, October 28, 2011 65 Dr. Tabrez Ahmad http://technolexindia.blogspot.comImportance of getting clarity on ownership of the “DESIGN”: Importance of getting clarity on ownership of the “DESIGN” In the context of joint design efforts, who owns the design should be spelt out in the contract Also, where a part of the design process is sourced out, it should be spelt out While designing for someone else, be clear in the contract on who owns the design Friday, October 28, 2011 66 Dr. Tabrez Ahmad http://technolexindia.blogspot.comTHE OVERLAP BETWEEN COPYRIGHT & DESIGN LAWS: THE OVERLAP BETWEEN COPYRIGHT & DESIGN LAWS Purely artistic works, for example, paintings and sketches are protected under the Copyright Act The design development process involves the development of a number of artistic works – can copyright protection be claimed over them? Friday, October 28, 2011 67 Dr. Tabrez Ahmad http://technolexindia.blogspot.comTHE DESIGN DEVELOPMENT PROCESS: THE DESIGN DEVELOPMENT PROCESS For example, TEXTILES : Sketches Engineered templates Film tracing Screens Engraving/printing Fabrication Each on of the above can qualify as “artistic works” under the Copyright Act, 1957 Friday, October 28, 2011 68 Dr. Tabrez Ahmad http://technolexindia.blogspot.comCOPYRIGHT & DESIGN LAWS: COPYRIGHT & DESIGN LAWS A distinction has thus sought to be drawn between “purely artistic works” and works which are commercialised by industrial application The rationale is that when artistic works are commercialised, they do not deserve the protection granted under the Copyright Act and come within purview of the Designs Act Friday, October 28, 2011 69 Dr. Tabrez Ahmad http://technolexindia.blogspot.com“Artistic work” – Overlap of Rights?: “Artistic work” – Overlap of Rights? Copyright does not subsist in design registered under the Designs Act Design capable of being registered, but which has not been so registered - copyright shall cease as soon as any article to which the design has been applied more than fifty times by an industrial process Friday, October 28, 2011 70 Dr. Tabrez Ahmad http://technolexindia.blogspot.comCopyright & Designs Law: Copyright & Designs Law However, it may not be practically possible for a designer to get all his designs registered. Also, all designs may not be “capable of registration” under the Designs Act It may be argued that a design 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 Friday, October 28, 2011 71 Dr. Tabrez Ahmad http://technolexindia.blogspot.comCopyright & Designs Law: Copyright & Designs Law It is therefore 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, 1957 Friday, October 28, 2011 72 Dr. Tabrez Ahmad http://technolexindia.blogspot.comDESIGN Vs. COPYRIGHT: DESIGN Vs. COPYRIGHT DESIGN COPYRIGHT Complete monopoly Only protects against copying Need to register to claim protection Subsists inherently Has to be “NEW” No requirement for novelty Maximum 15 years Life of author + 60 years Only in respect of goods registered for Is not goods specific Friday, October 28, 2011 73 Dr. Tabrez Ahmad http://technolexindia.blogspot.comDESIGN AS A TRADEMARK: DESIGN AS A TRADEMARK The “Epi” style leather design of Louis Vuitton Malletier Protected as a trademark against piracy by the Delhi High Court Friday, October 28, 2011 74 Dr. Tabrez Ahmad http://technolexindia.blogspot.comLicensing of a Design: Licensing of a Design The design can be licensed to third parties to exploit markets or commercialise it on a scale much bigger than what can 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 Friday, October 28, 2011 75 Dr. Tabrez Ahmad http://technolexindia.blogspot.comPIRACY OF REGISTERED DESIGN: PIRACY OF REGISTERED DESIGN Anyone who applies or causes to be applied to any article the design or any fraudulent or obvious imitation of it To see whether the essential design features are substantially similar between the article and the design representation It is the overall general impression of similarity which is taken into account Friday, October 28, 2011 76 Dr. Tabrez Ahmad http://technolexindia.blogspot.comExample of infringement of registered design: Example of infringement of registered design Birkin v. Pratt Lace pattern was held to have been infringed Friday, October 28, 2011 77 Dr. Tabrez Ahmad http://technolexindia.blogspot.comYSL v. Ralph Lauren: 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 Friday, October 28, 2011 78 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 79: Yves Saint Laurent vs. Ralph Lauren In 1970, the French designer Yves Saint Laurent (YSL) created and successfully marketed a long black sleeveless tuxedo-like evening dress, which the YSL fashion house reintroduced in their 1992 collection. Ralph Lauren was selling a similar version of the dress in their 1992 collection. YSL brought suit against Ralph Lauren under copyright infringement, design infringement and unfair competition. May 1994: The court in Paris decided in favor of YSL Court concluded that YSL owned the 1970 dress design under the law on Designs and Models and also considered the dress design an original copyrighted creation. YSL was awarded damages of FFr 2 million. [50% for copyright infringement and 50% for damages resulting from unfair competition. Friday, October 28, 2011 79 Dr. Tabrez Ahmad http://technolexindia.blogspot.comThe Suneet Verma controversy – Lessons to be learnt: The Suneet Verma controversy – Lessons to be learnt Need to assert rights over your designs – think that you are creating Intellectual Property from Day 1 of product design & development and not just when your design gets copied Friday, October 28, 2011 80 Dr. Tabrez Ahmad http://technolexindia.blogspot.comThe Suneet Verma controversy – Lessons to be learnt: The Suneet Verma controversy – Lessons to be learnt At the same time, if you need to use a design, do due diligence over its ownership – give credit – take a license if you do need to use it Friday, October 28, 2011 81 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 82: Controversy erupted at the Lakme India Fashion Week 2005. One designer accused another of copying his creation. The accuser : Designer Suneet Verma The accused : Designer Aki Naurla The accusation : Aki, who is designing for the Yashraj film, Bunty Aur Babli , has used a creation from Suneet's 2003 Fall/Winter collection to dress Rani Mukerji . Suneet says he will sue Yash Chopra , Rani Mukerji and Aki Narula for infringement of copyright. Friday, October 28, 2011 82 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 83: Behind-the-scenes : Aki explains, "A costume stylist for a film designs as well as sources the garments from clothes stores. The demand for clothes in Hindi movies is such that you do tend to source a lot of garments." Aki had a team assisted him for Bunty Aur Babli . A member of his team sourced the individual pieces of Rani's costume -- a chiffon poncho and a pair of embroidered black bootleg trousers -- from a Mumbai store called Options. There were apparently no labels on the outfit. Friday, October 28, 2011 83 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 84: The damages : Rani's costume by Aki costs Rs 8,500 Suneet's design from the fall collection costs Rs 14,500. Friday, October 28, 2011 84 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 85: Friday, October 28, 2011 85 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 86: Bernhardt v. Collezione Europa Fed. Cir. 2004) (04-1024) Bernhardt sued low cost furniture dealer Collezione for infringement of six design patents. The district court, however, held that several of patents were invalid under 102(b) for prior public use. Specifically, the court found that Bernhardt's disclosure of the designs at a Pre-Market exhibition rendered the patents invalid. In addition, the court found that Collezione's products did not infringe the patents. Friday, October 28, 2011 86 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 87: Fryett’s Fabrics Settles Hathi Design Infringement Claim Against Natural World Decision in Favour of Fryett Payment of £55,000, together with undertakings from Natural World to withdraw its Festival Elephant cushion and to deliver up all residual stocks of that design to Fryett’s . Tessitura A R Export SRL manufactured for Fryett’s , as exclusive distributor, a distinctive cushion panel design known as Hathi , marketed by Fryett’s within its Porter & Stone collection from June 2000. By mid 2002 Fryett’s had sold over 45,000 metres of Hathi . Natural World then began to sell a similar design marketed as Festival Elephant at prices which undercut the Hathi product. Fryett’s filed suit against Natural World alleging infringement of copyright and seeking an Injunction and damages. Natural World’s Festival Elephant Fryett’s Hathi Friday, October 28, 2011 87 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 88: The Court ruled that the perfume, called Timmy Holedigger , could not under any circumstance be confused with Tommy Hilfiger cologne, nor could it be seen as a competing product trading on the designer's good will. Besides, Nature Labs LLC, sells numerous other parody fragrances for pets, including Pucci (Gucci), Bono Sports (Ralph Lauren's Polo Sports) and Miss Claybone (Liz Claiborne). The Court observed that the other trademark holders have accepted the parody and not challenged Nature Lab's Trademarks . Tommy Hilfiger Licensing Inc. vs. Nature Labs LLC The US District Court in New York dismissed Tommy Hilfiger Licensing Inc's suit finding that "Timmy Holedigger", Nature Labs perfume for dogs, does not infringe on the fashion designer and cologne maker's trademark. Nature Labs sells its perfumes in pet and novelty stores , packaged in batches of three similar bottles,bearing slogans like "strong enough for a man, but made for a chihuahua ." Friday, October 28, 2011 88 Dr. Tabrez Ahmad http://technolexindia.blogspot.comShirin Guild vs. Eskandar Ltd and Another English High Court (02 February, 2001) : Shirin Guild vs. Eskandar Ltd and Another English High Court (02 February, 2001) Court Decision: Shirin Guild garments, made as prototypes for mass-production, and being machine made garments of a very simple design, could not be regarded as works of artistic workmanship or works of art. However, Shirin Guild's modifications of the design of the original Gigli sweater was sufficient for her resulting designs to be original. Friday, October 28, 2011 89 Dr. Tabrez Ahmad http://technolexindia.blogspot.comShirin Guild vs. Eskandar Ltd and Another contd……..: Shirin Guild vs. Eskandar Ltd and Another contd …….. Eskander Nabavi had been designing chenille and tweed sweaters of a wide, square design since early 1991 September 1991: Shirin Guild met Nabavi to negotiate production of loose fitting, square peasant style garments and agreed to let Nabavi produce square style garments from her design drawings bearing particular resemblance to a wide sweater designed by the designer Gigli Havelock a company produced samples for Nabavi based on the drawings of Shirin Guild and the Gigli sweater sample having a width of 100cm and a V-neck in contrast to the 88cm width and crossover V-neck of Guild's design. In due course a shirt and cardigan of the same square 100cm wide design of the Havelock sample sweater were also made. Friday, October 28, 2011 90 Dr. Tabrez Ahmad http://technolexindia.blogspot.comShirin Guild vs. Eskandar Ltd and Another contd……..: Shirin Guild vs. Eskandar Ltd and Another contd …….. A partnership was formed between Shirin Guild and Eskander Nabavi along with two other persons with each partner having a 25 per cent share of profit. There was no agreement that any copyright or design right originally owned by Shirin Guild was to become partnership property. Therefore Shirin Guild remained the sole owner of those rights. Partnership was terminated in August 1992 . Almost a decade after the partnership was dissolved, Shirin Guild filed a suit claiming that - ** Eskander Nabavi had copied her designs to set up his own range of square and wide styles of shirt, sweater and cardigan, in competition to her. ** Her garment designs were protected by copyright as works of artistic craftsmanship, or alternately their shape and configuration was protected by design right. Friday, October 28, 2011 91 Dr. Tabrez Ahmad http://technolexindia.blogspot.comShirin Guild vs. Eskandar Ltd and Another contd……..: Shirin Guild vs. Eskandar Ltd and Another contd …….. The key task before the court was : Whether or not an article was a work of art was whether the maker had the conscious purpose of creating a work of art. Friday, October 28, 2011 92 Dr. Tabrez Ahmad http://technolexindia.blogspot.comShirin Guild vs. Eskandar Ltd and Another contd……..: Shirin Guild vs. Eskandar Ltd and Another contd …….. Observations by the court : The samples of the Shirin Guild garments, made as prototypes for mass-production, and being machine made garments of a very simple design, could not be regarded as works of artistic workmanship or works of art. However they are examples of new developments in the fashion world. Friday, October 28, 2011 93 Dr. Tabrez Ahmad http://technolexindia.blogspot.comShirin Guild vs. Eskandar Ltd and Another contd……..: Shirin Guild vs. Eskandar Ltd and Another contd …….. If a sufficient level of independent skill and labour was used to modify an existing design, an original design would result for copyright and design purposes. Shirin Guild's modifications of the design of the original Gigli sweater was sufficient for her resulting designs to be original. Though other designs featuring the wide look existed in the relevant design field of ladies luxury fashion, the essential features of Shirin Guild's designs were not commonplace and therefore, she succeeded in her claim of design right infringement. Friday, October 28, 2011 94 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 95: CONTESSA FOOD PRODUCTS, INC. v CONAGRA, United States Court of Appeals for the Federal Circuit 01-1157 CONTESSA FOOD PRODUCTS, INC. (formerly known as ZB Industries Inc.), Plaintiff- Appellee , v. CONAGRA, INC. ( doing business as Singleton Shrimp Company and as Meridian Products), MERIDIAN SEAFOOD PRODUCTS, INC., and OCEAN DUKE CORPORATION United States Court of Appeals for the Federal Circuit 01-1157 DECIDED: March 13, 2002 Friday, October 28, 2011 95 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 96: U.S. Design Patent No. 404,612 Friday, October 28, 2011 96 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 97: On remand, the district court is instructed to consider features, in addition to the arrangement of the shrimp on the top of the tray, regarding the underside of each of the accused products visible after the packaging is removed. The overall features of the top, side and underside of the accused products must be compared with the patented design as a whole as depicted in all of the drawing figures to determine infringement. Because the district court did not fully consider the underside of the tray illustrated in Figure 4 of the `612 patent when applying the "ordinary observer" test, we vacate the decision granting summary judgment of infringement and remand for further proceedings consistent herewith. Friday, October 28, 2011 97 Dr. Tabrez Ahmad http://technolexindia.blogspot.comCONCLUSION: CONCLUSION The Design right needs to be used to support and leverage the enormous amount of creativity and potential of Indian designers – time has come to actively harness it – don’t just wake up when your design gets copied, start thinking about it from Day 1 of product creation and development A unique design for which you see commercial value and which you intend to commericalise, get it registered as a design Friday, October 28, 2011 98 Dr. Tabrez Ahmad http://technolexindia.blogspot.comCONCLUSION: CONCLUSION Till the time you file a design application, treat it as confidential when you need to disclose it to wholesalers/exporters/in a portfolio Have clarity on the ownership of the designs that you create by entering into contracts that spell out who owns the designs Maintain documentation and records at every stage of product development – helps you claim copyright even if your design is unregistered Friday, October 28, 2011 99 Dr. Tabrez Ahmad http://technolexindia.blogspot.comCONCLUSION: CONCLUSION When using designs, do your due diligence on the ownership of these designs – give credit, take licenses Commericalise your design through license arrangements Friday, October 28, 2011 100 Dr. Tabrez Ahmad http://technolexindia.blogspot.comCONCLUSION: CONCLUSION The fashion design community should lobby and build pressure on legislators and the government to provide for an “unregistered design right” as exists in the European Union Friday, October 28, 2011 101 Dr. Tabrez Ahmad http://technolexindia.blogspot.comDo you have any question?: Do you have any question? Friday, October 28, 2011 102 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 103: Friday, October 28, 2011 Dr. Tabrez Ahmad http://technolexindia.blogspot.com 103 ThanksDo you have any question?: Do you have any question? Friday, October 28, 2011 104 Dr. Tabrez Ahmad,http:// iplexindia.blogspot.comSlide 105: Friday, October 28, 2011 Dr. Tabrez Ahmad,http:// iplexindia.blogspot.com 105 Thanks You do not have the permission to view this presentation. In order to view it, please contact the author of the presentation.
Design Law tabrezahmad Download Post to : URL : Related Presentations : Share Add to Flag Embed Email Send to Blogs and Networks Add to Channel Uploaded from authorPOINT lite Insert YouTube videos in PowerPont slides with aS Desktop Copy embed code: (To copy code, click on the text box) Embed: URL: Thumbnail: WordPress Embed Customize Embed The presentation is successfully added In Your Favorites. Views: 406 Category: Science & Tech.. License: All Rights Reserved Like it (1) Dislike it (0) Added: October 28, 2011 This Presentation is Public Favorites: 0 Presentation Description Dr Tabrez Ahmad Lectures Comments Posting comment... Premium member Presentation Transcript Slide 1: IP Protection of Industrial Design By Dr. Tabrez Ahmad Friday, October 28, 2011 Dr. Tabrez Ahmad http://technolexindia.blogspot.com 1Designs: Designs Design As per Copinger and Skone James on Copyright, a design is, in broad terms, the plan or scheme for the appearance of an article (or a part of an article). It primarily concerns with what an article looks like or is intended to look like. It is not concerned with how an article performs its function . The design of an article may be recorded in any form including the written description, sketch, drawing, photograph or it could actually be embodied in the article itself. “Design” has also been defined as the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article. Copinger & Skone James on Copyright, 15th Edn., Vol. 1, pg. 730 Friday, October 28, 2011 2 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comInfringement : Infringement Infringement in the context of Indian Textiles, Apparels and Life Style Industry: Indian Textiles: If artistic patterns are drawn up on a piece of cloth to be used for any purpose, including but not limited to for instance, making of garments, bed sheets, sofa covers, table cloths, etc., then the artistic patterns printed on the piece of cloth are protected as copyrights. On the other hand, if a designer of clothes creates a new pattern of garment to be used as a fashionable attire, then the sketch/ drawing that is drawn of the pattern of the garment is protected as a copyright. Friday, October 28, 2011 3 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comInfringement : Infringement However, once the idea of the creative pattern is implemented on the piece of cloth, then the same may be protected as a design right. If, the intention of the designer is to ensure that only one piece of the garment is manufactured, then the same could also be protected as the artistic work imprinted on the piece of cloth having copyrights. Friday, October 28, 2011 4 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comInfringement : Infringement Alternatively, if the designer’s intention is to produce several thousands of garments in different scheme of colours , etc., then the intention of the designer is to use the said design in the industry. Accordingly, the latter form of use of the same material may be considered to be a design. There is an ongoing debate on the issue and a lot depends on the manner, in which the author of the work intends to use the work. Friday, October 28, 2011 5 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comIndian Cases: Indian Cases Friday, October 28, 2011 6 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comCases: Cases Tahiliani Design Private Ltd. vs. Renu Tandon & Anr. C.S. (OS) No. 2222 of 2008 – Before Hon’ble Delhi High Court Friday, October 28, 2011 7 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comCases: Cases Allegation that the Defendants’ garments were copies of the garments designed and crafted by the Plaintiff The said garments were supposed to be developed, designed and crafted by the plaintiff as a part of their collection for the year 2006 The Hon’ble Delhi High Court vide order dated 21.10.2008 granted ex-parte ad-interim injunction Tahiliani Design Private Ltd. vs. Renu Tandon & Anr. C.S. (OS) No. 2222 of 2008 – Before Hon’ble Delhi High Court Friday, October 28, 2011 8 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comCases: Cases Defendant served notice. Application for vacation of stay moved claiming that both designs are separate. The impugned prints are generic Jamawar Prints Matter is sub- judice – Referred to Mediation Tahiliani Design Private Ltd. vs. Renu Tandon & Anr. C.S. (OS) No. 2222 of 2008 – Before Hon’ble Delhi High Court Friday, October 28, 2011 9 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comCases: Cases Allegation of infringement of copyright as the defendant used the dress in a movie which was worn by an actress Importance of costumes worn by actors and actresses in a film play special role and serve purpose of promotion of the movie Held that all kinds of clothes worn by actors cannot be stated as Fair Use permitted under sec 52 (1) (u). Suneet Varma Design Pvt. Ltd. Vs Jas Kirat Singh Narula & Anr. [2007 (34) PTC 81 (Del)] Friday, October 28, 2011 10 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comCases: Cases Case relating to design of upholstery Plaintiff claimed to have copyright in the artistic work applied to upholstery design Did not have a registered design however they claimed a copyright in the drawings Microfibres Inc vs. Girdhar and Co. and Ors. : 2006(32) PTC 157 (Del) Friday, October 28, 2011 11 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comCases: Cases Question was whether without a registered design, the plaintiff could protect the same and whether the copyright was lost because of more than 50 reproduction of the said upholstery fabric design The Court although upholding that the motives etc. of the plaintiff was artistic and also holding that the defendants had copied it, on a legal and technical argument that more than 50 reproduction had been made, refused to grant injunction Microfibres Inc vs. Girdhar and Co. and Ors. : 2006(32) PTC 157 (Del) Friday, October 28, 2011 12 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comCases: Cases Plaintiff claimed an injunction on the ground that his designs of shoe soles had distinctive shape and configuration During the course of argument, it was revealed that the plaintiff himself had copied designs from Bata India Ltd. Thus Court had held that the plaintiff himself being a pirater, no injunction can be granted in favour of the plaintiff 1997(17) PTC 268: Baldev Singh vs. Shriram Footwear Friday, October 28, 2011 13 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comCases: Cases Case under the Designs Act, 2000 Plaintiff had claimed that defendants copied the design “Stylush”, “Corel” and “Ultra” in respect of bath tubs Defendant had not established that he had been selling bath tubs prior to the registration obtained by plaintiff in respect of similar designs Plaintiff had a registered design Sufficient resemblance between the two designs and the plaintiff’s design was protected Hindustan Sanitaryware & Industries Ltd. vs. Dip Crafts Industries: 2003(26) PTC163 (Del) Friday, October 28, 2011 14 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comCases: Cases Judgment of full bench of Delhi High Court Holds primarily that in a case filed for infringement of a design, the defendant would be entitled to take a defence that the registration of the design itself was incorrect Various grounds can be taken for claim that the registration was granted wrongly, namely, that the design is not new or original or unique If any of the grounds can be proved, then the fact that the design is registered by itself, does not come to the aid of the plaintiff Registration can be a proof at the first stage but it has to be established that this was not copied design and that it is a new and original Metro Plastic Industries (Regd.) vs. M/s. Galaxy Footwear New Delhi: 2000(20) PTC 1 Friday, October 28, 2011 15 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comCases: Cases Suit filed alleging infringement of design in respect of a bottle which is being used by plaintiff for packing hair oil Court found plaintiff’s bottle to be common bottle used by several other companies Bottles were held to be in use much prior to the registration of the design of the plaintiff No peculiar feature of the bottle registered as a design and the plaintiff had not pin pointed any novelty in the design of the bottle Held that for validly of the registered design there must be some novelty and originality in the design sought to be protected and it must have not been pre-published Dabur India Ltd. Vs. Rajesh Kumar & Ors 2008 (37) PTC 227 Friday, October 28, 2011 16 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comCases: Cases Suit filed for the infringement as well as passing off of design in Toy Scooter The defendant pleaded the prior publication of the design Another defense taken by the defendant was that the defendant too was having the registration of the design Court held that there were various dissimilarities in the prior published design The design of the defendant was identical to the design of the plaintiff Hence the defendant is not protected even on account of the registration having been obtained by it which admittedly is the subsequent registration Vikas Jain Vs. Aftab Ahmad And Ors, 2008 (37) PTC 288 (Del) Friday, October 28, 2011 17 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comCases: Cases Suit for infringement of a design, where the defendant had filed a cancellation petition with the Controller of Designs Proceedings pending before the controller of Design who had heard the arguments in the cancellation petition before him and the order had been reserved Defendant had also sought the transfer of the cancellation proceedings from the Controller to the Hon’ble Delhi High Court Hon’ble High Court declined to stay the proceedings pending before the Controller and to order for the transfer of those proceedings as there was no provision for the transfer of the cancellation proceedings under the Act Reckitt Benckiser Australia Pty Ltd. And Anr Vs. R. B. Impex And Ors 2008 (37) PTC 262 (Del) Friday, October 28, 2011 18 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comCases: Cases Single Judge of this Court held that once a design was registered, prima facie, it was only the registered proprietor, who could take benefit of the registered design The Court then negatived the contention that even if a false plea about the validity of registration was taken up by a Defendant, no interim injunction should be granted. The Court went on to hold that the contention that the design had no novelty was a valid defence to the Suit and could be raised to challenge the validity of the registration. It further held that this did not have any bearing at the initial stage and that these were matters to be decided on evidence. It must be mentioned that after so holding the Court, went into the merits and held that in that case it had not been shown that the design was previously published Sat Pal Singh Vs. S.P. Engineering Works - 1982(2) PTC 193 Friday, October 28, 2011 19 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comSlide 20: Faber Castell “Textliner”. A dark green body Unique cap of same colour as colour of ink Gold lettering on green body Regd design. Prior Publication could be through prior documents or some other prior user. Injunction granted Cases Faber Castell Vs. Pikpen - 2003 PTC 538 Friday, October 28, 2011 20 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comSlide 21: Suitcases made by plaintiff copied by defendant The entire range was copied Claim was based on drawings & copyright No registered design No protection granted as it is manufactured industrially more than 50 times. Cases Samsonite Vs. Vijay Sales 1998 PTC 372 Friday, October 28, 2011 21 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comSlide 22: Design of photo-frames Registered design Defendant no.2 was an employee of plaintiff Injunction granted protecting the copyright in the design of photo-frames Cases Preeti Gupta Vs. Rajendra Prahladkar 2002 PTC 64 Friday, October 28, 2011 22 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comInternational Cases: International Cases Friday, October 28, 2011 23 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comRADELY GOWNS Ltd. v COSTAS SPYROU and BROKE v SPINCERS DRESS DESIGN Ltd.(1975) FSR 455 : RADELY GOWNS Ltd. v COSTAS SPYROU and BROKE v SPINCERS DRESS DESIGN Ltd.(1975) FSR 455 Plaintiff & defendant manufacture ladies clothing. Copyright claimed in 3 stages of Manufacturing Procedure viz., - design sketches, - cutting patterns - prototype garments Friday, October 28, 2011 24 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comRADELY GOWNS Ltd. v COSTAS SPYROU and BROKE v SPINCERS DRESS DESIGN Ltd.(1975) FSR 455 : Def argued Prototype is not work of artis . crtms . No one author is involved Cutting patterns are functional One of the sketches was copied from earlier dress Dress could not reproduce a sketch Stiffness was to be given otherwise it is not a dress Delay RADELY GOWNS Ltd. v COSTAS SPYROU and BROKE v SPINCERS DRESS DESIGN Ltd.(1975) FSR 455 Friday, October 28, 2011 25 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comRADELY GOWNS Ltd. v COSTAS SPYROU and BROKE v SPINCERS DRESS DESIGN Ltd.(1975) FSR 455 : Court Held: It is work of A.C Need not unite with one author Dress can be a 3 dimensional reproduction of a sketch Huge diff between the earlier dress and new one, hence plaintiff work is original RADELY GOWNS Ltd. v COSTAS SPYROU and BROKE v SPINCERS DRESS DESIGN Ltd.(1975) FSR 455 Friday, October 28, 2011 26 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comBRIGID FOLEY Ltd. v ELLOT (1982) RPC 433: BRIGID FOLEY Ltd. v ELLOT (1982) RPC 433 It has been observed that if there is a direct copying from a garment which one person has designed and produced by himself, doing all the cutting , stitching, and so on, there might be a case for saying that there would be a breach of doing that. Friday, October 28, 2011 27 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comBERNSTEIN v SYDNEY MURRAY(1981) RPC 303: BERNSTEIN v SYDNEY MURRAY(1981) RPC 303 The plaintiffs were owners of copyright in certain sketches for ladies’ garments in which the garments were shown as worn by ladies. They had displayed garments made from such sketches in fashion shows and shop windows. Defendants have copied the dresses produced from plaintiff’s sketches. It was held that this constituted infringement of copyright in sketches. Friday, October 28, 2011 28 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comBURKE and MARGOT BURKE Ltd. v SPINCERS DRESS DESIGNS (1936) CH D 400: BURKE and MARGOT BURKE Ltd. v SPINCERS DRESS DESIGNS (1936) CH D 400 The plaintiff’s alleged that defendants had infringed the copyright in the sketch described as “ frock being worn by a young lady ” It was also alleged that there was infringement of artistic copyrights in dresses made up by the plaintiff’s in accordance with those sketches, which dress themselves were said to be works of artistic craftsmanship It was held that there was no infringement of a sketch by a frock. Friday, October 28, 2011 29 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comIn MERLET v MOTHERCARE Ltd (1986) RPC 115: In MERLET v MOTHERCARE Ltd (1986) RPC 115 The plaintiff made a prototype baby cape for her child. The cape was subsequently manufactured by the second plaintiff. The defendants copied the plaintiff’s garments and made baby cape in accordance with the copy. The plaintiff claiming the handmade prototype garment as a work of craftsmanship it was not a work of artistic craftsmanship brought an action for infringement of copyright. Friday, October 28, 2011 30 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comIn MERLET v MOTHERCARE Ltd (1986) RPC 115: It was held that though the prototype was a work of craftsmanship it was not a work of artistic craftsmanship. It was held that in approaching the question the garment has to be considered by itself and neither as worn nor as containing a baby. No aesthetic satisfaction unless worn on the baby Action was dismissed. An appeal against infringement of certain drawings was dismissed. In MERLET v MOTHERCARE Ltd (1986) RPC 115 Friday, October 28, 2011 31 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comKOMESAROFF v MICKLE (1988) RPC 204: KOMESAROFF v MICKLE ( 1988) RPC 204 A product called (moving sand pictures) comprising a mixture of liquid, colored sands, and a layer of air bubbles encased within two glass panels was held not a work of artistic craftsmanship. They are functional – not regd design Friday, October 28, 2011 32 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comCases: Cases MERCANDISING CORPORATION v HARPBOND(1983) FSR 32 P, 32 ( Facial make-up was not held a painting within the meaning of sec 3 of the U.K. copyright act.) Friday, October 28, 2011 33 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comFord Motor Co.1993 RPC 399: Ford Motor Co.1993 RPC 399 Vehicle parts are not subject matter of design because’ they have no value in commerce except as part of a vehicle Mirrors, seats, etc., were capable of registration as substitution was possible without affecting shape of the vehicle. The distinction that seems to have been drawn is that there are several parts which are mostly hidden and never seen, such parts cannot be registered as designs. However, parts and their circuits if in drawing form are artistic works Friday, October 28, 2011 34 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comGeorge Hensher Ltd s. Restawile Upholstery 1975 RPC 31: George Hensher Ltd s. Restawile Upholstery 1975 RPC 31 Upholstered chairs & settees. One prototype was evolved – chairs were copied from it and sold Def. copied the chairs and hence the prototype Trial Court granted injunction. Appeal court dismissed the injunction. HL refused protection Friday, October 28, 2011 35 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comGeorge Hensher Ltd s. Restawile Upholstery 1975 RPC 31: George Hensher Ltd s. Restawile Upholstery 1975 RPC 31 Artistic craftsmanship need not necessarily mean “work of art”. The product may be a commercial success but need not be of Art craftsmanship Friday, October 28, 2011 36 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comMerchandising Corpn Vs. Harpbond 1983 FSR 32: Merchandising Corpn Vs. Harpbond 1983 FSR 32 Adam from the pop group Adam & Ants New look for himself with Red-Indian face markings Two red lines in grease paint, light blue line in between, heart over left eyebrow & a beauty spot Def. made a poster of it & made a portrait & superimposed new look over an old poster In infringement action court held that this is not a painting and hence not protectable. Friday, October 28, 2011 37 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comAnimal Fair Inc., Vs. Amfesco Inds 227 USPQ 817 (1985): Animal Fair Inc., Vs. Amfesco Inds 227 USPQ 817 (1985) Novelty slippers Resembles a bear’s foot or paw Slipper’s design features separate from its utilitarian features, incl. impractical width of sole, shape of sole, profile of slipper, toes which are unrelated to function and copyrightable. Injunction granted. Friday, October 28, 2011 38 Dr. Tabrez Ahmad , http://iplexindia.blogspot.comWhat are Industrial Designs?: What are Industrial Designs? The ornamental or aesthetic aspect of an article that enhances visual appeal and differentiates product. e.g. 3-D features of shape or surface as of a perfume bottle, 2-D patterns of lines, shapes and colours as on a bed sheet. Friday, October 28, 2011 Dr. Tabrez Ahmad http://technolexindia.blogspot.com 39Criteria for Protection as ID : Criteria for Protection as ID New and Original Capable of mass production or application on an article of utility Not contrary to public order or morality The shape should not be determined merely by the functionality of the good. Friday, October 28, 2011 Dr. Tabrez Ahmad http://technolexindia.blogspot.com 40Comparison of ID against TM : Comparison of ID against TM ID Has to be integral part of product Should be original and new but need not be distinctive TM Is applied on the product but need not be embodied in it. Should be distinctive Friday, October 28, 2011 Dr. Tabrez Ahmad http://technolexindia.blogspot.com 41ID, Copyright, Patent : ID, Copyright, Patent If the article is not mass produced or the design can not be applied on a useful article, the design would be an aesthetic work, protectable under copyright. Some engineering designs may be sufficiently innovative, protectable as a patent. ID Protects commercial exploitation of the design idea through products/articles that embody it or reproduce it and not the articles themselves. Friday, October 28, 2011 Dr. Tabrez Ahmad http://technolexindia.blogspot.com 42Slide 43: “DESIGNS” Functional / utilitarian Patents Act, 1970 Purely artistic works Copyright Act, 1957 Designs with eye-appeal & capable of Industrial application Designs Act, 2000 Friday, October 28, 2011 43 Dr. Tabrez Ahmad http://technolexindia.blogspot.comDESIGN RIGHTS HAVE AN IMPORTANT ROLE TO PLAY IN THE FASHION INDUSTRY: DESIGN RIGHTS HAVE AN IMPORTANT ROLE TO PLAY IN THE FASHION INDUSTRY Friday, October 28, 2011 44 Dr. Tabrez Ahmad http://technolexindia.blogspot.comOverview: 45 Overview Prevalence of Copying in Fashion Industry Impact of Technology on Copying Where Does Fashion Fit Within Various IP Protections? Current Status of IP Protections Available to Fashion Designers Impact of Low-IP Equilibrium in Fashion Industry Where Do We Go From Here? Friday, October 28, 2011 Dr. Tabrez Ahmad http://technolexindia.blogspot.comPOSSIBLE REASONS WHY IPRs ARE THOUGHT TO BE NOT APPLICABLE TO THE FASHION INDUSTRY?: POSSIBLE REASONS WHY IPRs ARE THOUGHT TO BE NOT APPLICABLE TO THE FASHION INDUSTRY? The nature of fashion design necessarily attracts imitation – “fashion following” The transitory/seasonal nature of the fashion industry & markets The fear that protection may paralyse the fashion industry by creating monopolies Friday, October 28, 2011 46 Dr. Tabrez Ahmad http://technolexindia.blogspot.comWhy is it important for the fashion community to think of design protection?: Why is it important for the fashion community to think of design protection? Design protection is as applicable to the fashion industry as in any other business segment In the fashion industry, it is the appearance of the product that is one of the most crucial determining factors in consumer choice A unique & innovative design can thus be the USP and the linchpin for the business Friday, October 28, 2011 47 Dr. Tabrez Ahmad http://technolexindia.blogspot.comIPRs & the fashion industry: IPRs & the fashion industry If China’s strength lies in volumes, India’s lies in value addition The recognition of the role of the DESIGNER & the immense value of the INTANGIBLE that they create International experience shows that protection stimulates rather than stunt the fashion industry – eg., France Friday, October 28, 2011 48 Dr. Tabrez Ahmad http://technolexindia.blogspot.comIPRs & the fashion industry: IPRs & the fashion industry Design rights & IPRs in general, recognise & harness individual creativity & help PROFIT from it Understanding the boundaries of design protection also helps in not infringing other’s rights Friday, October 28, 2011 49 Dr. Tabrez Ahmad http://technolexindia.blogspot.comA “DESIGN” UNDER THE DESIGNS ACT, 2000: A “DESIGN” UNDER THE DESIGNS ACT, 2000 2D or 3D features of shape , configuration , pattern , ornament , composition of lines, colours Applied to any article by any industrial process or means The finished article appeals to the eye Does not include anything which is in substance a mere mechanical device Not an artistic work or trademark Friday, October 28, 2011 50 Dr. Tabrez Ahmad http://technolexindia.blogspot.comDESIGNS CAN BE 2D OR 3D OR COMBINATION OF BOTH : DESIGNS CAN BE 2D OR 3D OR COMBINATION OF BOTH Surface pattern (2D) Cut of the garment (3D) Friday, October 28, 2011 51 Dr. Tabrez Ahmad http://technolexindia.blogspot.com DESIGNS EXCLUDED FROM PROTECTION: DESIGNS EXCLUDED FROM PROTECTION Not NEW or ORIGINAL If the design has been disclosed to the public in India or elsewhere (exception is provided for exhibitions) Not significantly distinguishable from known designs or a combination of known designs Friday, October 28, 2011 52 Dr. Tabrez Ahmad http://technolexindia.blogspot.com“NEW OR ORIGINAL”: “NEW OR ORIGINAL” “Original”: Means that it must originate from the creator “New”: May involve a design which is known but is applied for the first time to that article But over the years, the test has become NEW AND ORIGINAL Friday, October 28, 2011 53 Dr. Tabrez Ahmad http://technolexindia.blogspot.comTHE DEGREE OF NOVELTY REQUIRED : THE DEGREE OF NOVELTY REQUIRED “New or original” does not simply mean different A trade variant of an old design does not make it novel Substantial novelty required Friday, October 28, 2011 54 Dr. Tabrez Ahmad http://technolexindia.blogspot.com“TRADE VARIANTS”: “TRADE VARIANTS” 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.” Thus, trifling variations/immaterial details would not be considered “NEW” Friday, October 28, 2011 55 Dr. Tabrez Ahmad http://technolexindia.blogspot.comWHAT IS “NOVELTY”: WHAT IS “NOVELTY” Strikingly different appearance Pattern made up of old features but resulting combination with strikingly different appearance can be novel Friday, October 28, 2011 56 Dr. Tabrez Ahmad http://technolexindia.blogspot.comExample of “Novelty”: Example of “Novelty” Wallpaper Manufacturers Limited case Wallpaper pattern held to be a new and original combination of known designs Friday, October 28, 2011 57 Dr. Tabrez Ahmad http://technolexindia.blogspot.comRequirement of “non-disclosure”: Requirement of “non-disclosure” Prior to application, one should be careful not to launch the design into the market The Design, prior to the filing of the application should be treated as confidential information Friday, October 28, 2011 58 Dr. Tabrez Ahmad http://technolexindia.blogspot.comWHAT IF YOUR DESIGN IS ALSO FUNCTIONAL?: WHAT IF YOUR DESIGN IS ALSO FUNCTIONAL? The intent of the Designs Act is to protect shapes & not functions But, there may be a design which also has functional features Test is to see if design is solely dictated by function. If yes, it will not be registrable Friday, October 28, 2011 59 Dr. Tabrez Ahmad http://technolexindia.blogspot.comWHY REGISTER YOUR DESIGN? – DESIGNS ACT, 2000: WHY REGISTER YOUR DESIGN? – DESIGNS ACT, 2000 • Statutory right – accrues only on registration - territorial Right to prevent all other 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 Friday, October 28, 2011 60 Dr. Tabrez Ahmad http://technolexindia.blogspot.comCLASSIFICATION ACCORDING TO GOODS: CLASSIFICATION ACCORDING TO GOODS Registration is in relation to goods Locarno classification which is followed throughout the world 32 classes Protection confined to class for which registered More than one design may be registered as a set of articles of same character Friday, October 28, 2011 61 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 62: Origin of the Locarno Classification The Locarno Classification is based on a multilateral treaty administered by WIPO. This treaty is called the Locarno Agreement Establishing an International Classification for Industrial Designs , which was concluded in 1968. This Classification is commonly referred to as the Locarno Classification. The Agreement is open to States party to the Paris Convention for the Protection of Industrial Property. How is it applied? The trademark offices of the contracting States of the Locarno Agreement are required to include in the official documents reflecting the deposit or registration of industrial designs the numbers of the classes and subclasses of the Classification into which the goods incorporating the designs belong. They must do the same in any publication which the offices issue in respect of the deposit or registration. Friday, October 28, 2011 62 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 63: Advantages and uniqueness of the Locarno Classification Use of the Locarno Classification by national offices has the advantage of filing industrial designs with reference to a single classification system. This procedure facilitates industrial design searches and obviates substantial reclassification work when documents are exchanged at the international level. Is it used in many countries? On January 1, 2009, 49 States were party to the Locarno Agreement. They have adopted and apply the Locarno Classification for Industrial Designs. Moreover, four organizations and the International Bureau of WIPO in the administration of the Hague Agreement actually use the Locarno Classification. Friday, October 28, 2011 63 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 64: What is the structure of the Locarno Classification? The Locarno Classification comprises a list of 32 classes and 219 subclasses with explanatory notes and an alphabetical list of goods in which industrial designs are incorporated, with an indication of the classes and subclasses into which they fall. This list contains some 7,024 indications of different kinds of goods. Is it updated? In order to keep the Locarno Classification up to date, it is continuously revised and a new edition is published every five years. The current (ninth) edition has been in force since January 1, 2009. The revision is carried out by a Committee of Experts set under the Locarno Agreement. All States party to the Agreement are members of the Committee of Experts. Friday, October 28, 2011 64 Dr. Tabrez Ahmad http://technolexindia.blogspot.comWHO CAN APPLY FOR A DESIGN REGISTRATION?: WHO CAN APPLY FOR A DESIGN REGISTRATION? If design has been specially commissioned for good consideration, the person for whom it is executed An assignee or exclusive licensee In any other case, the AUTHOR Friday, October 28, 2011 65 Dr. Tabrez Ahmad http://technolexindia.blogspot.comImportance of getting clarity on ownership of the “DESIGN”: Importance of getting clarity on ownership of the “DESIGN” In the context of joint design efforts, who owns the design should be spelt out in the contract Also, where a part of the design process is sourced out, it should be spelt out While designing for someone else, be clear in the contract on who owns the design Friday, October 28, 2011 66 Dr. Tabrez Ahmad http://technolexindia.blogspot.comTHE OVERLAP BETWEEN COPYRIGHT & DESIGN LAWS: THE OVERLAP BETWEEN COPYRIGHT & DESIGN LAWS Purely artistic works, for example, paintings and sketches are protected under the Copyright Act The design development process involves the development of a number of artistic works – can copyright protection be claimed over them? Friday, October 28, 2011 67 Dr. Tabrez Ahmad http://technolexindia.blogspot.comTHE DESIGN DEVELOPMENT PROCESS: THE DESIGN DEVELOPMENT PROCESS For example, TEXTILES : Sketches Engineered templates Film tracing Screens Engraving/printing Fabrication Each on of the above can qualify as “artistic works” under the Copyright Act, 1957 Friday, October 28, 2011 68 Dr. Tabrez Ahmad http://technolexindia.blogspot.comCOPYRIGHT & DESIGN LAWS: COPYRIGHT & DESIGN LAWS A distinction has thus sought to be drawn between “purely artistic works” and works which are commercialised by industrial application The rationale is that when artistic works are commercialised, they do not deserve the protection granted under the Copyright Act and come within purview of the Designs Act Friday, October 28, 2011 69 Dr. Tabrez Ahmad http://technolexindia.blogspot.com“Artistic work” – Overlap of Rights?: “Artistic work” – Overlap of Rights? Copyright does not subsist in design registered under the Designs Act Design capable of being registered, but which has not been so registered - copyright shall cease as soon as any article to which the design has been applied more than fifty times by an industrial process Friday, October 28, 2011 70 Dr. Tabrez Ahmad http://technolexindia.blogspot.comCopyright & Designs Law: Copyright & Designs Law However, it may not be practically possible for a designer to get all his designs registered. Also, all designs may not be “capable of registration” under the Designs Act It may be argued that a design 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 Friday, October 28, 2011 71 Dr. Tabrez Ahmad http://technolexindia.blogspot.comCopyright & Designs Law: Copyright & Designs Law It is therefore 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, 1957 Friday, October 28, 2011 72 Dr. Tabrez Ahmad http://technolexindia.blogspot.comDESIGN Vs. COPYRIGHT: DESIGN Vs. COPYRIGHT DESIGN COPYRIGHT Complete monopoly Only protects against copying Need to register to claim protection Subsists inherently Has to be “NEW” No requirement for novelty Maximum 15 years Life of author + 60 years Only in respect of goods registered for Is not goods specific Friday, October 28, 2011 73 Dr. Tabrez Ahmad http://technolexindia.blogspot.comDESIGN AS A TRADEMARK: DESIGN AS A TRADEMARK The “Epi” style leather design of Louis Vuitton Malletier Protected as a trademark against piracy by the Delhi High Court Friday, October 28, 2011 74 Dr. Tabrez Ahmad http://technolexindia.blogspot.comLicensing of a Design: Licensing of a Design The design can be licensed to third parties to exploit markets or commercialise it on a scale much bigger than what can 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 Friday, October 28, 2011 75 Dr. Tabrez Ahmad http://technolexindia.blogspot.comPIRACY OF REGISTERED DESIGN: PIRACY OF REGISTERED DESIGN Anyone who applies or causes to be applied to any article the design or any fraudulent or obvious imitation of it To see whether the essential design features are substantially similar between the article and the design representation It is the overall general impression of similarity which is taken into account Friday, October 28, 2011 76 Dr. Tabrez Ahmad http://technolexindia.blogspot.comExample of infringement of registered design: Example of infringement of registered design Birkin v. Pratt Lace pattern was held to have been infringed Friday, October 28, 2011 77 Dr. Tabrez Ahmad http://technolexindia.blogspot.comYSL v. Ralph Lauren: 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 Friday, October 28, 2011 78 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 79: Yves Saint Laurent vs. Ralph Lauren In 1970, the French designer Yves Saint Laurent (YSL) created and successfully marketed a long black sleeveless tuxedo-like evening dress, which the YSL fashion house reintroduced in their 1992 collection. Ralph Lauren was selling a similar version of the dress in their 1992 collection. YSL brought suit against Ralph Lauren under copyright infringement, design infringement and unfair competition. May 1994: The court in Paris decided in favor of YSL Court concluded that YSL owned the 1970 dress design under the law on Designs and Models and also considered the dress design an original copyrighted creation. YSL was awarded damages of FFr 2 million. [50% for copyright infringement and 50% for damages resulting from unfair competition. Friday, October 28, 2011 79 Dr. Tabrez Ahmad http://technolexindia.blogspot.comThe Suneet Verma controversy – Lessons to be learnt: The Suneet Verma controversy – Lessons to be learnt Need to assert rights over your designs – think that you are creating Intellectual Property from Day 1 of product design & development and not just when your design gets copied Friday, October 28, 2011 80 Dr. Tabrez Ahmad http://technolexindia.blogspot.comThe Suneet Verma controversy – Lessons to be learnt: The Suneet Verma controversy – Lessons to be learnt At the same time, if you need to use a design, do due diligence over its ownership – give credit – take a license if you do need to use it Friday, October 28, 2011 81 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 82: Controversy erupted at the Lakme India Fashion Week 2005. One designer accused another of copying his creation. The accuser : Designer Suneet Verma The accused : Designer Aki Naurla The accusation : Aki, who is designing for the Yashraj film, Bunty Aur Babli , has used a creation from Suneet's 2003 Fall/Winter collection to dress Rani Mukerji . Suneet says he will sue Yash Chopra , Rani Mukerji and Aki Narula for infringement of copyright. Friday, October 28, 2011 82 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 83: Behind-the-scenes : Aki explains, "A costume stylist for a film designs as well as sources the garments from clothes stores. The demand for clothes in Hindi movies is such that you do tend to source a lot of garments." Aki had a team assisted him for Bunty Aur Babli . A member of his team sourced the individual pieces of Rani's costume -- a chiffon poncho and a pair of embroidered black bootleg trousers -- from a Mumbai store called Options. There were apparently no labels on the outfit. Friday, October 28, 2011 83 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 84: The damages : Rani's costume by Aki costs Rs 8,500 Suneet's design from the fall collection costs Rs 14,500. Friday, October 28, 2011 84 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 85: Friday, October 28, 2011 85 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 86: Bernhardt v. Collezione Europa Fed. Cir. 2004) (04-1024) Bernhardt sued low cost furniture dealer Collezione for infringement of six design patents. The district court, however, held that several of patents were invalid under 102(b) for prior public use. Specifically, the court found that Bernhardt's disclosure of the designs at a Pre-Market exhibition rendered the patents invalid. In addition, the court found that Collezione's products did not infringe the patents. Friday, October 28, 2011 86 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 87: Fryett’s Fabrics Settles Hathi Design Infringement Claim Against Natural World Decision in Favour of Fryett Payment of £55,000, together with undertakings from Natural World to withdraw its Festival Elephant cushion and to deliver up all residual stocks of that design to Fryett’s . Tessitura A R Export SRL manufactured for Fryett’s , as exclusive distributor, a distinctive cushion panel design known as Hathi , marketed by Fryett’s within its Porter & Stone collection from June 2000. By mid 2002 Fryett’s had sold over 45,000 metres of Hathi . Natural World then began to sell a similar design marketed as Festival Elephant at prices which undercut the Hathi product. Fryett’s filed suit against Natural World alleging infringement of copyright and seeking an Injunction and damages. Natural World’s Festival Elephant Fryett’s Hathi Friday, October 28, 2011 87 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 88: The Court ruled that the perfume, called Timmy Holedigger , could not under any circumstance be confused with Tommy Hilfiger cologne, nor could it be seen as a competing product trading on the designer's good will. Besides, Nature Labs LLC, sells numerous other parody fragrances for pets, including Pucci (Gucci), Bono Sports (Ralph Lauren's Polo Sports) and Miss Claybone (Liz Claiborne). The Court observed that the other trademark holders have accepted the parody and not challenged Nature Lab's Trademarks . Tommy Hilfiger Licensing Inc. vs. Nature Labs LLC The US District Court in New York dismissed Tommy Hilfiger Licensing Inc's suit finding that "Timmy Holedigger", Nature Labs perfume for dogs, does not infringe on the fashion designer and cologne maker's trademark. Nature Labs sells its perfumes in pet and novelty stores , packaged in batches of three similar bottles,bearing slogans like "strong enough for a man, but made for a chihuahua ." Friday, October 28, 2011 88 Dr. Tabrez Ahmad http://technolexindia.blogspot.comShirin Guild vs. Eskandar Ltd and Another English High Court (02 February, 2001) : Shirin Guild vs. Eskandar Ltd and Another English High Court (02 February, 2001) Court Decision: Shirin Guild garments, made as prototypes for mass-production, and being machine made garments of a very simple design, could not be regarded as works of artistic workmanship or works of art. However, Shirin Guild's modifications of the design of the original Gigli sweater was sufficient for her resulting designs to be original. Friday, October 28, 2011 89 Dr. Tabrez Ahmad http://technolexindia.blogspot.comShirin Guild vs. Eskandar Ltd and Another contd……..: Shirin Guild vs. Eskandar Ltd and Another contd …….. Eskander Nabavi had been designing chenille and tweed sweaters of a wide, square design since early 1991 September 1991: Shirin Guild met Nabavi to negotiate production of loose fitting, square peasant style garments and agreed to let Nabavi produce square style garments from her design drawings bearing particular resemblance to a wide sweater designed by the designer Gigli Havelock a company produced samples for Nabavi based on the drawings of Shirin Guild and the Gigli sweater sample having a width of 100cm and a V-neck in contrast to the 88cm width and crossover V-neck of Guild's design. In due course a shirt and cardigan of the same square 100cm wide design of the Havelock sample sweater were also made. Friday, October 28, 2011 90 Dr. Tabrez Ahmad http://technolexindia.blogspot.comShirin Guild vs. Eskandar Ltd and Another contd……..: Shirin Guild vs. Eskandar Ltd and Another contd …….. A partnership was formed between Shirin Guild and Eskander Nabavi along with two other persons with each partner having a 25 per cent share of profit. There was no agreement that any copyright or design right originally owned by Shirin Guild was to become partnership property. Therefore Shirin Guild remained the sole owner of those rights. Partnership was terminated in August 1992 . Almost a decade after the partnership was dissolved, Shirin Guild filed a suit claiming that - ** Eskander Nabavi had copied her designs to set up his own range of square and wide styles of shirt, sweater and cardigan, in competition to her. ** Her garment designs were protected by copyright as works of artistic craftsmanship, or alternately their shape and configuration was protected by design right. Friday, October 28, 2011 91 Dr. Tabrez Ahmad http://technolexindia.blogspot.comShirin Guild vs. Eskandar Ltd and Another contd……..: Shirin Guild vs. Eskandar Ltd and Another contd …….. The key task before the court was : Whether or not an article was a work of art was whether the maker had the conscious purpose of creating a work of art. Friday, October 28, 2011 92 Dr. Tabrez Ahmad http://technolexindia.blogspot.comShirin Guild vs. Eskandar Ltd and Another contd……..: Shirin Guild vs. Eskandar Ltd and Another contd …….. Observations by the court : The samples of the Shirin Guild garments, made as prototypes for mass-production, and being machine made garments of a very simple design, could not be regarded as works of artistic workmanship or works of art. However they are examples of new developments in the fashion world. Friday, October 28, 2011 93 Dr. Tabrez Ahmad http://technolexindia.blogspot.comShirin Guild vs. Eskandar Ltd and Another contd……..: Shirin Guild vs. Eskandar Ltd and Another contd …….. If a sufficient level of independent skill and labour was used to modify an existing design, an original design would result for copyright and design purposes. Shirin Guild's modifications of the design of the original Gigli sweater was sufficient for her resulting designs to be original. Though other designs featuring the wide look existed in the relevant design field of ladies luxury fashion, the essential features of Shirin Guild's designs were not commonplace and therefore, she succeeded in her claim of design right infringement. Friday, October 28, 2011 94 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 95: CONTESSA FOOD PRODUCTS, INC. v CONAGRA, United States Court of Appeals for the Federal Circuit 01-1157 CONTESSA FOOD PRODUCTS, INC. (formerly known as ZB Industries Inc.), Plaintiff- Appellee , v. CONAGRA, INC. ( doing business as Singleton Shrimp Company and as Meridian Products), MERIDIAN SEAFOOD PRODUCTS, INC., and OCEAN DUKE CORPORATION United States Court of Appeals for the Federal Circuit 01-1157 DECIDED: March 13, 2002 Friday, October 28, 2011 95 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 96: U.S. Design Patent No. 404,612 Friday, October 28, 2011 96 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 97: On remand, the district court is instructed to consider features, in addition to the arrangement of the shrimp on the top of the tray, regarding the underside of each of the accused products visible after the packaging is removed. The overall features of the top, side and underside of the accused products must be compared with the patented design as a whole as depicted in all of the drawing figures to determine infringement. Because the district court did not fully consider the underside of the tray illustrated in Figure 4 of the `612 patent when applying the "ordinary observer" test, we vacate the decision granting summary judgment of infringement and remand for further proceedings consistent herewith. Friday, October 28, 2011 97 Dr. Tabrez Ahmad http://technolexindia.blogspot.comCONCLUSION: CONCLUSION The Design right needs to be used to support and leverage the enormous amount of creativity and potential of Indian designers – time has come to actively harness it – don’t just wake up when your design gets copied, start thinking about it from Day 1 of product creation and development A unique design for which you see commercial value and which you intend to commericalise, get it registered as a design Friday, October 28, 2011 98 Dr. Tabrez Ahmad http://technolexindia.blogspot.comCONCLUSION: CONCLUSION Till the time you file a design application, treat it as confidential when you need to disclose it to wholesalers/exporters/in a portfolio Have clarity on the ownership of the designs that you create by entering into contracts that spell out who owns the designs Maintain documentation and records at every stage of product development – helps you claim copyright even if your design is unregistered Friday, October 28, 2011 99 Dr. Tabrez Ahmad http://technolexindia.blogspot.comCONCLUSION: CONCLUSION When using designs, do your due diligence on the ownership of these designs – give credit, take licenses Commericalise your design through license arrangements Friday, October 28, 2011 100 Dr. Tabrez Ahmad http://technolexindia.blogspot.comCONCLUSION: CONCLUSION The fashion design community should lobby and build pressure on legislators and the government to provide for an “unregistered design right” as exists in the European Union Friday, October 28, 2011 101 Dr. Tabrez Ahmad http://technolexindia.blogspot.comDo you have any question?: Do you have any question? Friday, October 28, 2011 102 Dr. Tabrez Ahmad http://technolexindia.blogspot.comSlide 103: Friday, October 28, 2011 Dr. Tabrez Ahmad http://technolexindia.blogspot.com 103 ThanksDo you have any question?: Do you have any question? Friday, October 28, 2011 104 Dr. Tabrez Ahmad,http:// iplexindia.blogspot.comSlide 105: Friday, October 28, 2011 Dr. Tabrez Ahmad,http:// iplexindia.blogspot.com 105 Thanks