Trademark Protection & Safeguards for Fashion Designers in India
The roots of fashion in India can be traced back to more than 6000 years ago which started as a tradition. India still has a rich and aesthetic textile heritage with mostly all the states having their own native attire and traditional costumes with many including accessories as well. On one hand, the Fashion Industry is thriving towards greater heights, on the other hand, it is being taken aback by the menace of piracy in designs. Piracy is the illegal and unauthorized copying, selling and distributing of any work which is protected under Intellectual Property Rights. Piracy with respect to trademark taken place when a person copies the logo or brand name of a business to take advantage of its goodwill and reputation. Trademark is that branch of Intellectual Properties (IP) that enables the consumers to identify the source of the product and to differentiate similar goods produced by different brands. This plays a key role in the Fashion Industry as the name of the Fashion Designer sells and hence, it becomes an important aspect to ensure people can clearly recognize which design belongs to which designer. Therefore, the Trademarks Act, 1999 tries to prevent counterfeiting and preventing the use of such name or logo to pass off copied goods as original.
Further, the purpose of trademark is not limited to distinguishing goods but to protect trade dress as well, a concept which was limited to protection of product packaging. However, in the light of the judgement of US Supreme Court in Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205 (2000), wherein the Court while protecting the shape, color and arrangement of the of the children’s clothing line under trade dress, laid down that the ambit of trade dress has been expanded to include design of the product. Further the Court in case John H. Harland Co. v. Clarke Checks Inc 711 F 2d 966 (11th Cir. 1983), has gone forward to state that trade dress includes any image of the product including size, shape, configuration, etc. For e.g. Burberry holds trademark in his logo as well as the Burberry Check pattern. In India, in the case of Christian Louboutin vs Mr Pawan Kumar & Ors CS (COMM) 714 of 2016, wherein the suit was filed by Plaintiff which a famous brand for selling luxurious shoes against the Defendants who were alleged to sell counterfeited goods at lowers cost causing monetary loss as well as loss to the goodwill of the Plaintiff. The Delhi High Court, while upholding the right of the Plaintiff in it’s well known Trademark and the Trade dress of ‘Red Sole Shoes’ held the defendant liable to pay compensation of Rs 10.7 Lakhs.
The following procedure has to be following for the registration of trademark by the Fashion Designer:
Step 1: Filing Trademark application with trademark registry
The following information is required to file an application for trademark registration:
Name, address, nationality and legal status of the applicant.
A graphical representation of the mark.
Whether the mark is proposed to be used or as been in use since before, if used from before the date of first use.
The details of the goods and services with respect to which the mark would be used.
If the mark has some colour, then the details of the colour.
Trademark Registry offices are located in Delhi, Mumbai, Kolkata and Chennai. The registry has to be decided on the basis of their territorial jurisdiction.
Step 2: Trademark examination by the Registry
The trademark application is examined on the basis of absolute of relevant grounds by the examiner. The trademark can either be accepted or objected by the examiner.
In case it is accepted, the mark is published in the trademark journal for the third parties to raise objects. It is not accepted, the objections are send in the form of an examination report and the applicant is given a period of one month to reply to thr given objections. When such a reply is accepted by the registry, the mark is published in trademark journal.
Step 3: Publication of mark in the Trademark Journal
The purpose of publication in the journal is to give an opportunity to the public to oppose the registration of the given mark, of they deem it to be non-registrable either on absolute or relevant grounds. If an opposition is raised, the same is contested between the parties and decision is taken by the registry.
Step 4: Registration of Trademark
In case, no opposition is filed within 3 months or if the Registry accepts the mark after opposition, the mark is entered into the register of trademarks and a certificate of registration is issued by the Registry.
In the world of fashion, as the people judge a product by the brand or the name of the designer. Therefore, it is key for any company involved in fashion designing business to first identify their Intellectual Property, then protect and safeguard it from illegal and unauthorised commercial exploitation. In the fashion industry the business is based on the how well known and reputed the Company is, hence, the protection of the trademark becomes of utmost importance, to differentiate the products of the company from the other competitor and also to prevent any illegal and/or unauthorised usage of the same though piracy.
Authored By: Adv. Anant Sharma & Ananya Jain