The Paris Convention and Global Fashion : An Indian Legal Perspective

Abstract:

The Paris Convention was introduced in 1883 for the protection of Industrial Properties is foundational and oldest instrument of Intellectual Property law. The article presented examines the relation and relevance of Paris Convention to global fashion industry, with analysis of how principles of Paris Convention 1883 operates in India and Indian legal society and industry. [The principles from Paris Convention: the national treatment, priority rights, well known marks protection]. This research analyses the Paris Convention alongside showing its relation to trade marks act 1999 and the designs act 2000 of India, supported by the judgments of Indian courts. The research focuses on the global fashion industry and provisions provided relating to it and showcases the challenges faced in fashion industry in areas like unregistered design protection and digital brand exploitation. This research provides legislative and judicial reforms in India related to fashion and its position in Indian fashion market.

Introduction:

The fashion industry is one of the top five Industries which is economically profitable and creative industry around the world, generating approximately US $1.8-2.0 Trillion in 2026. Fashion industry is one of the India’s most rapidly expanding sectors. Yet it is also an industry vulnerable to Intellectual Property laws and violations, such as copied luxury goods sold and provided in domestic market, unauthorized use of designs and brand names by domestic manufacturers seeking to gain capital and goodwill in name of Well-known fashion houses.

The international fashion intellectual protection lies in the Paris Convention which provides protection to Industrial Properties. Paris convention was adopted in 1883 and was adopted to protect Industrial Properties all around the world. India joined the Paris convention in 1998, which reshaped the domestic intellectual property framework in India and led to enactment of Trade Marks Act 1999 and Designs Act 2000. Despite being long time, the Paris Convention continues to provide base and foundation to enforce the Intellectual Property rights related to fashion industry in both Indian and international market.

This Research questions and addresses: does the Paris Convention provide effective framework for protecting Intellectual Property rights in global fashion industry, how much India as one of the biggest market of fashion in the world implemented its obligations. This research provides core legal analysis, case laws and findings of the relationship between Paris Convention and Global fashion industry.

This Research proceeds as follows: Part 3 shows the background and conceptual framework. Part 4 shows legal analysis. Part 5 discusses case laws. Part 6 offers critical thinking analysis and findings. Part 7 states recommendations. Part 8 provides references used in the research.

Background and Conceptual Framework:

The Paris Convention was created because of crisis faced in International trade.  Because there was no provision which provided security to foreign holders, in 1873 refused to be part of Vienna Exhibition because they feared that their inventions/ designs would be copied without any legal and IP protection. This made eleven nations to negotiate the Paris Convention 1884. Today this Convention has 179 member nations known as most followed treaty in world.

 The Paris Convention was created to protect Industrial Property such as trademark, utility marks, Industrial Designs, patents, geographical indications. Relating to fashion industry, the provisions are concerned with Trademarks (Article 6), well known marks (Article 6 bis), Industrial Designs, Trade names (Article 8).

Three Principles were introduced in Paris Convention. Principle of National Treatment- (Article 2) which states that there shall be equal protection to member of other state IP protection same as provided to the own national members. Second principle is Priority Date– (Article 4) which grants an applicant who has filed in one nation, a period of 6 months for marks and designs within which they have to file in other member states while retaining   the benefit of the original filing date. Third principle is Protection of well-known marks– which mandates member states to accept or refuse the registration of marks that reproduce or imitate marks well-known in that country. Regardless of well-known marks being registered domestically.

India joined the Paris Convention in 1998 to reform necessary changes in its domestic IP legislation. The Trade Mark Act 1999 which replaced the Trade and Merchandise Marks Act 1958, which was enacted to deal with international obligations. Section 11(6) of Trade Marks Act 1999 implements Well- known marks as obligation, directing the Registrar to be knowledgeable about trademark including knowledge from the result of the promotion of the trademark. The Designs Act 2000 also reflects India’s Paris Convention obligations in protection of designs domain.

The Paris Convention was created primarily with focus on Industrial innovation in mind, and it was difficult to adjust and apply the provisions on fashion as it is a creative industry. Designs are mostly copied and often adjust the value in market from Brand is seen. The six month priority period might be useful in case of Patent filings, may not be useful in terms of fashion designs whose commercial life has already expired before international filing is completed.

Legal Analysis–

National Treatment and its Application to Fashion Brands in India-

Article 2 of Paris Convention the principle of National Treatment is silver lining upon which the international fashion brands use their Intellectual property rights in India. Before the implementation of Paris Convention in India, foreign fashion used to have uncertain faith in Indian market, while they can register their marks under 1958 Act, they used to have no guaranteed equal treatment as Indian nationals in terms of scope or protection. Article 2 states India to treat nationals of Paris Convention member states same as Indian nationals in matter of Industrial property protection.

Regarding in practice, this shows most consequences in trademark disputes involving trans-border reputation. Well known international brand such as Louis Vuitton, Gucci, Hermes most of the times encounters such domestic manufacturers trading the products/marks without having registered those marks in India. The principle of national protection has provided such brands to obtain relief from Indian courts on basis of their global reputation even if not registered in India- a protection which will mirror what Indian nationals would receive in respect of their own well-known domestic marks.

The well-known Marks Doctrine, Article 6bis and Indian fashion Law-

Article 6bis of Paris Convention obliges member states to refuse or cancel at the request of an interested party, the registration of mark that creates confusion with a mark considered to be well- known in that country. This obligation applies weather the well-known mark is registered in the country where protection is sought.

India has implemented Article 6bis through Section 11 of Trade Mark Act 1999, which stops the registration of marks which are identical or similar to well-known marks, the act establishes a procedure for the formal Trade recording of well-known marks. The Trade Marks Registry maintains a public list of marks which are well-known, which includes international fashion brands.

The well- known marks doctrine has come to existence to stop counterfeit fashion goods in India. Domestic manufacturers who register marks similar to international well-known fashion brands, is termed as Trademark Squatting. Such can be opposed and their registration might get cancelled under this provision. This provision expands beyond identical marks, it includes imitations and translations which is relevant for fashion brands whose marks are reproduces in form of translation or in regional Indian languages.

Priority Rights and their limited Utility in Fashion Industry-

Article 4 of the Paris Convention grants 6 months priority period for trademarks and Industrial Designs, within which they have to file in other member states while keeping the relevance of original filing date. For a fashion brand launching a new collection or designs is a novel textile pattern, this allows protection to be secured internationally before the design becomes available in foreign markets.

However, the six-month priority period is limited utility in fashion world for reasons as the commercial lifestyle of fashion designs in fast fashion segment is frequently shorter than six month, which states that the commercial opportunity may have passed before international protection is secured, and Paris Convention  design protection applies only to registered designs. In India, the unregistered designs which account for the vast majority of fashion creations falls outside of protection of Paris Convention entirely. This is the gap which affects small Indian designers who lack resources legally to register their designs under jurisdiction within priority period.

Industrial Design Protection under the Designs Act 2000-

India’s Design Act 2000, is enacted to fulfil obligations of Paris Convention and TRIPS agreement, protects the features, shapes, patterns, or any article which is applied on by any Industrial process. For fashion industry it includes textile patterns, garments, accessory shapes and decorative stuff applied on cloths for protection. Registration provides right and protection for ten years which can be extended by five year against unauthorised reproduction.

Case Law Discussion–

1. R.Dongre v Whirlpool Corporation (1996)5 SCC 714

Facts- Whirlpool Corporation, a well-known American manufacturer of home appliances, owned the trademark “WHIRLPOOL” in several countries. Although whirlpool’s Trademark registration in India had lapsed, the mark had acquired considerable international reputation through advertisements appearing in magazines and publications circulated in India. An Indian company began manufacturing and marketing washing machines under the mark of “WHIRLPOOL” and applied for trademark registration in India. Whirlpool Corporation filed a suit seeking an injunction to restrain the Indian company from using the mark, arguing that the mark already enjoyed goodwill and reputation among Indian consumers.

Judgement- The Supreme Court upheld the injunction in favour of Whirlpool Corporation. The Court recognized that a trademarks reputation can transcend national boundaries and reach consumers through advertisements, media coverage and international exposure. It held that the use of the mark “WHIRLPOOL” by the Indian company was likely to deceive consumers into believing that its products were associated with Whirlpool Corporation. Consequently, the Supreme Court restrained the Indian company from using the trademark.

This case established the doctrine of Trans border Reputation. Under which a foreign trademark can be protected in India even without registration or substantial commercial use within India.

2. Christian Louboutin SAS v Abubaker CS (OS) 392/2018 ( Delhi High Court)

Facts- Christian Louboutin SAS, a renowned French Luxury fashion house, is internationally known for its high-heeled shoes featuring a distinctive red-coloured sole. The company owned registrations and intellectual property rights relating to the red sole mark in multiple jurisdictions and claimed extensive international reputation. The defendants were engaged in the manufacture and sale of footwear bearing red-coloured soles that closely resembled the plaintiff’s signature mark. Christian Louboutin filed a suit before the Delhi High Court alleging trademark infringement, passing off, unfair competition and dilution of its well-known trademark.

Judgement- the Delhi High Court recognized the extensive goodwill and reputation associated with Christian Louboutins red sole mark. The Court observed that the mark had become uniquely associated with the plaintiffs luxury footwear products and functions as a source identifier. It held that unauthorized use of identical or deceptively similar red soles was likely to cause confusion and dilute the distinctiveness of the plaintiff’s trademark. The High Court granted a permanent injunction restraining the defendants from manufacturing, marketing, advertising, or selling footwear bearing the infringing red sole design. The Delhi High Court also awarded reliefs in favour if the plaintiff, reinforcing protection for well-known fashion trademarks.  

This case stated that colour marks and other non-conventional trademarks can receive protection under Indian trademark law when they have acquired distinctiveness and reputation.

Critical Analysis and Findings–

The legal analysis and findings reveal that the Paris Convention protection to fashion industry in Indian market even if it’s incomplete framework of fashion IP.

The critical observations are as follows.

 The Paris Convention well-known marks provision under Article 6bis, has proven to be an effective tool in fashion industry in India. Indian Supreme Court in Whirlpool case have interpreted this this provision in detailed manner. Recognising trans-border reputation as sufficient ground for protection in absence of domestic registration. This judicial review has effectively closed the gap in protection of international fashion marks in India. However, just relying on Judicial decisions rather than codified statutes creates uncertainty there needs to be any relevant codified statute to protect the marks if not the small and medium sized fashion brands weather foreign or Indian may struggle in market.

The Paris Convention framework shows limitations on specific characteristics of fashion as creative industry. The Convention was designed to protect Industrial Property in a commercial environment featured with relatively slow innovation style and formal registration systems. Fashion, contains rapid trend cycles, creative process and culture which is limited to copying and inspiration in form of design and development. For fashion industry, the six month period is not useful to extent. The registered designs fail to protect the majority of fashion creations that enters the market without registration. The Convention provides no protection regarding fashion collection, which is termed as Trade Dress.

There is notable unbalance in how the Paris Convention treats Indian fashion brands compared to the international Luxury brands. The large fashion houses are provided with resources to register marks under multiple jurisdictions, equipped team and litigation before Indian courts. Small Indian fashion brands are far less able to use the provisions under the Paris Convention Act internationally. They lack good sources because of high cost of such essentials; even with principle of National Treatment is provided under the Convention.

From policy subject perspective, the findings states that Paris Convention remains a necessary but insufficient provision for fashion IP protection in India. The provision to be implemented needs to supplemented by the domestic legal reform which might take much time to implement rather than faster approach in Indian fashion markets, it shows that there is a need of implementation of international IP protection provision under Paris Convention, to make it accessible to industries within India’s vast fashion industry.

Conclusion-   

This research has examined the relevance of the Paris Convention for the protection of Industrial Property 1883 to the global fashion industry, with focus on Indian market. The Research question- weather the Paris Convention is effective framework for fashion IP in India for protection which must be answered with a qualified research. The conventions principles national treatment, well-known mark protection, priority rights continue to provide essential protection, Indian courts have interpreted these principles with relating to the situations of fashion disputes.

However in reality, the Conventions design protection is inadequate for the fashion industry. It mostly provides benefits to large international fashion brands rather than Indian brands that are basis of creative foundation of India’s fashion industries and its provision is not properly designed to address challenges of digital brand exploitation, rapid globalisation, virtual and fast fashion.

Recommendations, India needs to introduce a right providing short term protection for unregistered fashion designs that enter the market without registration. The trademark registry needs to provide proper guidelines on establishment of well-known marks and small creative designs. WIPO needs to provide detailed review of the Paris Convention design protection provision with relevance to use for fashion industry and design protection.

References and Bibliography–

International Instruments-

Paris Convention for the Protection of Industrial Property 1883.

Berne Convention, 1886

Trade- Related Aspects of Intellectual Property Rights 1994 (TRIPS)

Indian Instruments-

Trade Marks Act 1999 (INDIA)

Designs Act 2000 (INDIA)     

Copyright Act 1957 (INDIA)

Patents Act 1970 (INDIA)

Geogrphical Indications of Goods ( Registration and Protection) Act 1999 (INDIA)

Case Laws (Source)

N R Dongre v. Whirlpool Corporation (1996)5 SCC 714

Christian Louboutin SAS v. Abubaker CS (OS) 392/2018 (Delhi High Court)