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Ritu Kumar vs BIBA: A war of designs

Designs, under Section 2(d) of the Designs Act, 2000, states that “features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article in two or three-dimensional form, or both, by any industrial process or means – whether manual, mechanical or chemical, separate or combined – which in the finished article appeal to and are judged solely by the eye.”. This definition excludes any mode of construction, or anything which in its substance is a mere mechanical device. It also excludes any trademark or property mark as well as any artistic work as protected under the Copyright Act.

The term of protection of Designs is 10 years from the date of registration of that design. After 10 years, the protection can be extended for a period of 5 years. Once this period is complete the design falls in public domain and may be used unrestricted by anyone.[1]

This is a case of Ritika Private Limited v. Biba Apparels Private Limited where the Plaintiff brought a suit against the Defendant seeking an injunction against the Defendant from reproducing, printing, publishing, selling or offering etc. prints or garments which are a reproduction of the Plaintiff’s prints and garments. The Plaintiff is a famous boutique apparel designer brand in India. The Defendant is also a famous apparel designer and manufacturer in India. Both companies design attractive contemporary ethic wear – creative fusion fashion. The Plaintiff claimed to be the first owner of the copyright in the artistic works related to these garments and also claimed trade secret violation by its ex-employees. However, the Plaintiff’s designs were not registered under the Designs Act, 2000. The Defendant on the other hand, argued that the Plaintiff’s case fell squarely under Section 15(2) of the Copyright Act, 1957 i.e. the copyright in the Plaintiff’s design ceased to exist as it had been reproduced more than 50 times by an industrial process. The single judge of the Delhi High Court, citing in detail the Microfibers v. Girdhar and Co[2]. case,  on this very point, came to the conclusion that the suit was barred by Section 15(2) of the Copyright Act, 1957[3] as the Plaintiff’s copyright in the said works had ceased to exist. It stated that once a sketch or a design is used for creation of dresses, then, if it crosses 50 numbers, no copyright can subsist in the drawing and sketch under the Indian Copyright Act because of the language of Section 15(2) of the Indian Copyright Act, 1957. In the present case, it was reiterated from the judgment of Microfiber’s, clearly that if the design is not registered under the Designs Act, the design will lose its copyright protection under the Indian Copyright Act and the copyright will subsist only till the threshold limit of application of a copyright to an article by an industrial process is up to 50 times in number and once that limit is crossed, the design loses protection as a copyrighted work under the Indian Copyright Act. Further, it was noted from the facts that, the defendant is creating dresses or creating articles by an industrial means and process by application of the design or drawing or sketch and the defendant is not as it is affixing a print taken from the copyrighted work of the plaintiff as a print on a dress created by the defendant. Thus, it was found that there was no violation of a copyright of the plaintiff under the Indian Copyright Act, 1957 and was neither entitled to design protection.[4]

Therefore, Ritu Kumar by reproducing the said designs on its apparels, more than 50 times, was not only disentitled to design protection but also disentitled to enforce its copyright in the original drawing of the design. The court concluded that there was no copyright infringement, not by comparing similarity between the Plaintiff’s prints/designs and the Defendant’s printed reproduction, but by holding that the Defendant was creating apparel by an industrial process and was not merely lifting and affixing a print taken from the copyrighted work of the Plaintiff.

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