There are terms related to fashion that we hear in our everyday lives but when asked to explain, we might not be able to do it. One such term is Fashion Retailing. Retail is the final selling of goods from the seller to the consumer in small quantities, which cannot be resold to further customers. Certain aspects come under the umbrella of retailing such as pricing, labeling, packaging, taxation, etc. One of the many important aspects is branding, which is relevant in almost every type of industry but if looked in terms of fashion laws, it holds a unique place. The customers buy products and services depending on the value associated with a particular brand and that’s when the competition emerges and the infringement takes place, thus, leading to the need for fashion laws.
The fashion laws revolve around Intellectual Property Rights and yet they have not been explored to a deeper extent and the growth related to it has been much slower in comparison to other areas of law. “Intellectual property rights allow people to assert ownership rights on the outcomes of their creativity and innovative activity in the same way that they own physical property” [Compendium of Patent Statistics, 2005, Issued by OECD]. In legal terms, brand names are known as trademarks, and enterprise names are called trade names.
The Trademarks Act, 1999 specifies the law regarding trademarks in India. It extends the scope of protection by registration of a trademark to services as well, besides good. It recognizes the well-known marks as a distinct category, and also provides for registration of collective marks, owned by an association of persons.
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While The Designs Act, 2000 lays down the law for the protection of shape but not function or functional shape. It means that it does not include any method of construction or features or shape or configuration which are dictated solely by the function of which the article to be made in that shape or configuration has to perform [Escorts Construction Equipment Ltd v Action Construction Equipment Pvt. Ltd 1999 PTC 36 (Del)].
The remedy given under the Designs Act, 2000 is twofold i.e. an injunction can be filed against the offender and secondly, the remedy by way of damages/compensation. It means that the remedy of passing off is not available unlike in the case of infringement of the trademark. To explain in brief, the law of passing off is a remedy against a false representation. It is not a remedy against fraud. A case of passing off can be made out when a customer is deceived into believing that the good which the defendant is selling is the plaintiffs. This false representation may be made by a statement or by conduct, for example, by adopting the distinctive mark, name design, get up or appearance of another’s goods.
For registration of a product, the article must be novel and unique with regard to elements like shape, pattern, etc. If the defendant is successful in establishing a lack of novelty or existence of similar design earlier in the public domain, the infringement suit will fail. On the other hand, in respect of passing off the distinctiveness of the element of the mark, it’s visual or other presentation and it’s association with the trader or owner needs to be established. To make the case of infringement, fraud by the defendant has to be established. To prove the case of passing off, it becomes imperative for the owner of the mark to establish that the defendant has misrepresented to the public (intent excluded) that goods belong to the plaintiff.
This overlapping between the law of Trademark and Design was extensively discussed in the case of Crocs Inc. USA vs. Aqualite India Limited [CS-COMM — 903/2018], wherein the High Court of Delhi dismissed the suit filed by the multinational footwear manufacturer Crocs on the ground that a suit for action against passing off solely based on a design registered under the Design Act, 2000 is not maintainable. In this particular case, the plaintiff filed the suit to refrain the defendant from infringing the registered design of Crocs footwear and to restrain them from passing off the goods as their own. Composite suits were filed against some of the defendants for infringement of design as well as passing off. The glaring question raised in this suit was how could action on the ground of passing off concerning design/shape lie under common law i.e the Trademark Act, if under common law design/shape was not understood as a trademark. While in the case of Mohan Lal v. Sona Paint and Hardwares AIR 2013 Del 143, it was categorically held that the cause of action for infringement of design and for action of passing off available under trademark was different.
In a recent judgement of Lacoste & Anr v Aman Jain & Ors pronounced by Delhi High on 1 Feb, 2018, Lacoste was able to establish the case of infringement against two firms which were using the trademark “LACOSTE and LACOSTE with the crocodile logo” which was proved to be deceptive to the original Lacoste brand. This was a classic example of passing off. In this case, Lacoste was able to get the order for permanent injunction and the infringing firms were ordered to cease the sale of counterfeit Lacoste goods and also pay damages to Lacoste accordingly.
In today’s time of globalization, we have numerous brands at Indian and International level selling goods and services to the customers and protection of such brand names become important because of the trust customers place in certain brand value. Designers invest creative knowledge and labor in their products which deserves to be protected from any kind of infringement. Yet still, business owners are not sure as to how and why to protect their brand names. Failure to do so might hamper the reputation and trust of the customers leading to failure of the brand business. Thus, branding and its protection against infringement can be said to be two sides of the same coin.
– Authored by Ankita Srivastava
