How To Protect Your Design In The Fashion Industry

Designing A Product Is Not An Easy Task. It Requires Complete Dedication, Time, Effort, And Certainly Investment. It Is A Misconception That Design Creation Is No Rocket Science, It Certainly Involves A Lot Of Intellectuals, And That’s Why We Accord IP Protection To The Creators Of The Design – How To Protect Your Design In The Fashion Industry

Great Fashion Designers Like Manish Malhotra, Ritu Kumar, Masaba Gupta, Sabyasachi Mukherjee, And Many More Have Been Ruling The Fashion Industry For A Very, Very Long And Considerable Time. But, When You Talk Into The Chandi Chowk Market To Buy Wedding Dresses, You Can Find The Exact Copy Of The Wedding Lehenga For A Much Cheaper Rate.

Precisely, Design Piracy Is Imitation Or Copying The Design Without The Authorized Permission From The Original Creator Of The Design. Design Piracy Has Been A Growing Concern, And Endless Cases Have Been Witnessed In The Last Few Years Of Such Piracy.

“Design” Means And Includes Features Of Shape, Patterns, Configurations, Ornamentations, Compositions Of Lines And Colors, Anything That Can Be Reduced To 2-D Or 3-D Format And Are Appealing To The Eyes Of Any Common Prudent Man. It Also Applies To Any Article Processed By Any Process- Manual, Mechanically, Chemical, Or Combined Of Either Which Are Solely Judged By The Yes And Not Related To The Mechanism Or Process Used To Create The Product.

Design Piracy – Defined

Section 22 Of The Design Act, 2000 Gives A Clear Outline About Piracy Of Designs. This Section Begins With A Negative Connotation, Restricting Any Person Who Is Not A “Lawful Proprietor” Of The Design To Use The Design For Any Purpose Without The Permission Of The Owner Of The Design. The Section Is Divided Into Three Sub-Clauses Stating The Constituents Of Piracy.

  • If Any Person Uses The Registered Design For Sale Of The Product To Which The Design Is Applied Or Just The Design Without Being Applied To Any Product, Without A License Or Expressed Consent Of The Proprietor;
  • If Any Person Uses The Registered Design For Import Sale By Fraudulent Means Or Obvious Imitations Without The Consent Of The Proprietor;
  • If Any Person Uses, Publishes, Exposes, Or Causes To Be Published Or Exposed To Any Registered Design Without Prior Consent, Whatsoever, Will Or Shall Cause Piracy Of The Design.

Test Relating To Piracy:

Indian Judiciary Has Given Three Tests To Determine The Constitution Of Piracy Under The Act. These Tests Were Reiterated In The Case Of Britannia Industries Vs. Sara Lee Bakery (Famously Known As The Smiley Face Biscuit Case)

The Test Laid Down To Determine The Piracy Issue Are:

  • Test Of Obvious Fraudulent Imitation
  • Test Of Substantial Difference

In The First Test Of Obvious Fraudulent Imitation, The Court Has To Check For The Similarity Or Differences Through Eyes Alone, And If The Design Is Applied To The Product, Then The Court Has To Compare The Products Through The Eyes Of The Purchaser.

While Checking For The Similarity Or Differences, The Court Shall Check Whether The Designs Contested Are Fraudulent Or Obvious Imitations.

The Term Obvious Imitations Means Similarities That Are Apparent On The Face Of It And Is Clearly Visible To The Eyes That The Designs Strike To Be The One So Like The Original Or Registered Design.

Fraudulent Imitation Is Less Apparent Than Obvious Imitation. The Imitations Will Be Different From The Original Design In Some Aspects That Are Not Obvious Yet Perceptible When The Two Designs Are Scanned Closely.

While Judging The Similarity Between The Designs, The Court Is Not Obliged To Look Through The Eyes Of An Informed Person But Has To Examine From The Point Of View Of The Customer With Average Knowledge And Imperfect Recollection. (Veerplast  Houseware V Bonjoure International)

In The Second Test Of Substantial Differences, Which Was Laid Down In The Case Of Western Engineering Vs. Paul Engineering, The Court Held That A General View Of Both The Designs Have To Considered To Find Out If One Design Is As Good As Other Design, Subsequently Registered, And That Should Be Solely Conducted By Visual Examination Of Two Things.

The Similarity Of Devices’ External Appearances May Be A Relevant Factor In Determining The Piracy Of Designs. Upon Examination, If It Is Clarified That There Is Substantial Similarity Between The Designs, The Plaintiff Is Entitled To Recover From The Infringer; If Not, Then No Liability Is Attached To The Infringer. (J.N.Electricals V President Electricals)


In Case Of Piracy Of Designs, The Infringing Party Will Have To Bear The Liability Of Compensating The Original Registered Proprietor Of The Design To A Sum Of Not Exceeding More Than Rs. 25,000/-.  In Case Of A Suit To Be Filed, The Recoverable Amount Shall Not Exceed More Than Rs. 50,000/-.

The Registered Proprietor Is Also Entitled To Initiate A Suit To Recover Damages And Obtain An Injunction Against Such Repetition. However, These Remedies Are Not Exhaustive In Nature, And Courts Have The Discretion To Broaden The Remedies Available Under The Act. (Astral Polytechnik Limited Vs. Ashirvad Pipes Private Limited)

Apart From The Remedies Mentioned Above, The Plaintiff Will Also Be Entitled To Claim Rendition Of Accounts Or Profit And Delivery Of Infringing Or Pirated Materials And Destruction Of Materials. (Tobu Enterprises Private Limited Vs. Joginder Metal Works)

The Bottom Line:

The Given Tests, The Balance Of Convenience, And Irreparable Injury Apply While Dealing With The Adjudication Of Matters In The Design Piracy Cases. The Courts Will Analyze The Prima Facie Similarity Between The Designs And Then Conclude And Pronounce The Judgement. However, It Is To Be Kept In Mind That No Piracy Case Can Be Established During The Period When The Earlier Design Registration Lapsed Or Revoked, Or Canceled Due To Any Reason.


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