This article has been written by Vijaya S Ingule, pursuing the Diploma in US Intellectual Property Law and Paralegal Studies from LawSikho.

Introduction

The term fashion is defined as a popular or the latest style of clothing, hair, decoration, or behaviour. When one speaks of fashion and branded products, what instantly comes to our mind are the cuts, designs, price tags, and our budget, and thereafter the plethora of markets all over the world that provide the first copy of these branded items. The word ‘Fashion’ – by itself gives immense pleasure to our senses, such that when a brand name is added to the product it not only gives a sense of pride to the owner but also becomes a subject of envy for others. Speaking of bags, who would not love to have a Louis Vuitton? Similarly, every bride in an Indian wedding dreams of a Manish Malhotra or Sabyasachi outfit. Fashion is an ever-evolving industry where designs, colours, hues, etc. are constantly changing, revolving around various themes,  and keep evolving be it on clothing, hair, decoration, or accessories. 

In the fierce fashion industry, there is not only a constant demand for new products but there also is fierce demand for a new trend that could be copied. In view thereof, it becomes necessary to protect the rights ingrained in the creativity; be it colour, prints, material, etc. which comes within the definition of “Intellectual property.” In this chapter, we will look at various laws that the fashion industry can deploy to protect and safeguard the different intellectual property rights and preserve its goodwill in the market.

What’s an IP?

IP is the abbreviation for Intellectual property. Intellectual property is an intangible asset of a legal person or entity. It is the outcome of the person’s intellect, creativity, ideas, inventions, conceptions, etc. Non-significant a few years ago; intellectual property of late has gained significance owing to the goodwill and revenue it generates for the business houses. 

Intellectual property rights may be broadly divided into the following:

1. Trademark,
2. Copyrights,
3. Industrial designs, 
4. Patents.

Apart from the above, there are also;

1. Geographical indication,
2. Traditional know-how,
3. Trade secrets,

According to World Intellectual Property Rights Organisation for short WIPO, ‘Intellectual Property’ refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names, and images used in commerce.

Fashion and IP

As stated above, fashion is an industry that is constantly changing and evolving. It encompasses every walk of life and not just clothing, electronic gadgets. etc. It’s an industry in itself and contributes to the world economy. In terms of revenue, the fashion industry contributes about 2% to the world’s gross domestic product which roughly translates to about 3,000 billion dollars a year. However, much of the revenue of this fashion industry is eroded due to the counterfeit and knock-offs of these products. This industry is therefore facing a huge loss in its income and revenue because of the illegal and rampant copying of the products and merchandise. The Organisation for Economic Co-operation and Development (“OECD”) and the European Union Intellectual Property Office (“EUIPO”) in 2019 published a joint report titled “Trends in Trade in Counterfeit and Pirated Goods”, which stated that the value of imported fake goods worldwide topped $509 billion based on 2016 customs seizure data, up from $461 billion in 2013, the latter represents 2.5% of world trade.

The fashion industry is essentially a roll-out of products, though manufactured by machine, they are designed by the intellect. Right from its logo, punch lines to its design, the need to protect the merchandise becomes necessary as it carries not just the goodwill of the business house but more importantly the untiring efforts of the people involved in it. . The loss faced by the fashion industry on account of illegal and rampant copying of the merchandise and products, can be protected by the laws of intellectual property. 

Why is it important to obtain a trademark for your fashion brand?

As across the globe, many jurisdictions are silent on the fashion industry’s requirement in terms of protection, the most popular method of seeking protection in the sector of intellectual property in the fashion world is to apply for registration of a trademark under its brand.

A trademark is any word, logo, graphical representation,  phrase, symbol, or shape of a product and/or service. It creates an identity in the market which helps the consumer to distinguish the goods and/or services from the plethora of other such goods/services available in the market. Thus, for example; when someone utters the word ‘Zara’, people immediately connect to the retail brand of clothing; likewise,  the word “Louis Vuitton” brings to mind images of luxury bags. 

• As the very basis of a trademark is to create an identity of any goods and/or services and should be able to distinguish from other products in the market, 
• The trademark must be distinctive, non-generic, non-suggestive, and different from an existing recognised mark.
• That said, there are certain marks which though unregistered or are generic and suggestive in their appearances and/or names, get recognised and protected under the trademark for acquired distinctiveness. 
• These marks are protected based on the goodwill it has created, the impact on revenue generation, advertisement, the number of years in the business, etc. E.g., Chanel is the last name of the famous designer Coco Chanel. With her designs, she has created a niche for herself in the fashion industry. 

In the industry of fashion, a trademark plays an essential role not only in terms of logos, marks, or punch lines but also plays an essential role in the registration of the pattern, designs, colour. E.g., Christian Louboutin’s red bottom shoe soles where the mark consists of a red lacquered outsole on footwear that contrasts with the colour of the adjoining (“upper”) portion of the shoe or the distinctive stitch granted to Guru Denim Inc. under Class 25 for a stitching design consisting of the one-half inch stitch pattern used to outline the pocket and the chevron flap and to depict the “U” shape, as well as the, zigzagged stitching on the chevron flap.

How does trademark registration help?

Trademark registration in the fashion industry offers protection to the product against counterfeit, copying, etc. In the case of Christian Louboutin S.A., v. Yves Saint Laurent America Holding, Inc and Ors. The footwear designer brought an action against Yves Saint Laurent, alleging that the competitor violated her trademark by producing ‘‘high fashion’’ shoes with designer’s trademarked, signature lacquered red outsoles. The United States Court of Appeal held that “the District Court’s conclusion that a single color can never serve as a trademark in the fashion industry was based on an incorrect understanding of the doctrine of aesthetic functionality and was, therefore, an error. We further hold that the District Court’s holding that Louboutin’s trademark has developed ‘‘secondary meaning’’ in the public eye, was firmly rooted in the evidence of record, and was not clearly erroneous and that the Red Sole Mark is, therefore, a valid and enforceable trademark.”

Other than granting protection within the fashion industry, a registered trademark also grants protection to the owner from third parties outside the fashion industry. In the case of Louis Vuitton v. Louis Vuitton Dak, a South Korean fried chicken restaurant was not only using the nearly identical name “Louis Vuitton” but also was using similar packaging and logo of Louis Vuitton. Ruling for the brand, the court at Seoul held that the defendant was guilty of infringement and was fined to the tune of 14.5 million. A registered trademark of a brand adds to the valuation of the designer house or the company that owns the registered brand.

Getting copyright registration for the fashion designs

Under the regime of trademark a brand’s logo, punch lines, name, etc. may be registered, however, there is little or rather no protection guaranteed for prints, fabrics, etc. in the fashion industry. Copyright encompasses within it to protect the rights that creators have over their artistic works. Works covered by copyright range from books, music, paintings, sculpture, and films, to computer programs, databases, advertisements, maps, and technical drawings.

As a trademark only protects the brand’s logo, under copyright a designer may seek protection for their published design or work. 

• Copyright grants the owner the right to adaptation and reproduction. 
• However, to seek protection under copyright, the owner/designer must exhibit that the work sought is original, made independently, is artistic, creative, and has been produced on a tangible medium of expression. 
• Further if the designer house, designer, or the legal entity has any mobile application and/or website, the same can also be copyrighted in terms of its source code, programme, etc. 

Shortcomings of copyright protection

However, copyright protection has its own shortcomings. For eg. In India under the Copyright Act, 1957 though copyright grants protection for over 60 years (the 60-year period is counted from the year following the death of the author), one loses the protection of copyright as soon as the design has been reproduced more than fifty times by an industrial process by the owner of the copyright or by any other person or entity with a valid license to produce the work. Further, copyright in the fashion industry also faces flak under the garb of “functionality.” Clothing lines particularly have been looked into as a utilitarian function. 

However, over the years, designers have jumped over the fence to make their clothing line come under the umbrella of “wearable art” rather than that of wearable apparel. 

• In 2016, Forever 21 sued Bastiat USA Inc., for allegedly knocking off a fabric print that was copyrighted by Forever 21. However, the infringement suit was settled out of court. 
• In yet another famous case of Star Athletica, LLC v. Varsity Brands, Inc., the Supreme Court of the United States decided the circumstances under which aesthetic elements of “useful articles” can be restricted by copyright law. The court created a two-prong “separability” test, granting copyrightability on conditions of separate identification and independent existence of the product.

Registering designs for securing original and creative work

Fashion merchandise, especially accessories by luxury brands thrive on its ornamental features even more than the utility factor of the product. As discussed, where trademark takes care of the logo, mark, name, etc. of the brand and copyright takes care to some extent of the design patterns, etc., design becomes important for protecting the ornamental feature of merchandise. While intellectual property rights are refused to a product that has the factor of being functional and utilitarian, a registered design makes sure that the ornamental aspect of the product which is a creative, unique, and original invention of the creator is protected even if the product is functional and utilitarian.

• A design consists of the visual ornamental characteristics embodied in or applied to, an article of manufacture. 
• Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation. 
• A design for surface ornamentation is inseparable from the article to which it is applied and cannot exist alone. It must be a definite pattern of surface ornamentation, applied to an article of manufacture.

This intellectual property is mostly applied for the design of shoes and footwear, hair accessories, handbags, jewellery, watches, etc. For a design to be approved, a design must be ornamental, visible, independent of the functionality of the utility, novel, and unique. Under the jurisdiction of the United States of America as mentioned at 35 U.S.C. 173, the term for a design patent is a term of 15 years from the date it is granted. 

Fashion and geographical indications

A geographical indication (GI) is a sign used on products that have a specific geographical origin and possess qualities or a reputation that is based on that origin. To function as a GI, a sign must identify a product as originating in a given place. In addition, the qualities, characteristics, or reputation of the product should be essentially based on the place of origin. Since the qualities depend on the geographical place of production, there is a clear link between the product and its original place of production. E.g., Pashmina from Kashmir, Bandhani from Rajasthan, etc. 

Geographical indications are yet another most important and relevant protection that the fashion industry has as it protects the unique handicrafts and fashion articles originating from a specific location and consisting of specific quality or reputation. 

Conclusion

To sum up, for the fashion industry the lawmakers are yet to bring legislation that protects their creation independently and entirely, however, various aspects of intellectual property assist the fashion industry to protect its work and make sure that the revenue generation keeps increasing. The fashion industry spreads over to trademark, copyright, design patent, and GI. With more and more creations coming in, it is for the attorneys to determine and gauge correctly under which legislation the application of such protection should be made on behalf of their client from the fashion industry.

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